A recent Australian Designs Office decision highlights the potential importance of including a Statement of Newness and Distinctiveness (SoND) in an Australian design registration, as well as the extent to which an SoND can influence the scope of protection.
Griffith Hack v Clipex concerned 22 design registrations owned by Clipex, with each design in respect of a steel post in the shape of a star picket. Griffith Hack requested examination of each of Clipex’s 22 registrations, alleging the designs were neither new nor distinctive, and submitted prior art in support of the examination requests.
Each of Clipex’s 22 designs included the following SoND:
Newness and distinctiveness reside in the pattern or ornamentation as applied to a ground anchoring region of a steel post, as represented by grayscale shading in the accompanying representations, wherein: the grayscale shading represents any colour or texture that contrasts with the colour or texture of the unshaded region; and, when considering newness and distinctiveness, little or no weight is to be given to the shape or configuration of the post.
Griffith Hack asserted that the wording in the SoND meant that the features of shape and configuration of each star picket must be entirely ignored when assessing newness and distinctiveness, and that the question of newness and distinctiveness must be assessed only on the basis of pattern and ornamentation.
The Delegate noted the importance of the SoNDs on the scope of the designs at paragraph 35:
A central issue in this matter is the impact of the SoND on the scope of the Registrations. The Act mandates that if a design application includes a statement of newness and distinctiveness, then particular regard must be given to the visual features of the design which are identified as being new and distinctive. It is common ground that regard must be given to the SoND.
The Delegate further noted, however, that there are limitations on the extent to which the inclusion of a SoND qualifies the protection provided by the design representations. At paragraph 38 of the Decision:
On its face s 19(2)(b) of the Act requires particular regard to be paid to visual features identified in a statement of newness and distinctiveness, but this must be considered in the context of the design as a whole.
The Delegate then stated at paragraph 38 that, regardless of the SoND wording provided in each design, the features of shape and configuration cannot be entirely dismissed:
Applying the ordinary meaning of this provision to the SoND at hand, particular regard is to be given to the pattern or ornamentation features but some regard must be given to the shape or configuration features.
Based on the prior art submitted by Griffith Hack, the Delegate concluded that each of Clipex’s 22 designs were new; and so the Delegate was then left to determine the issue of distinctiveness. The Delegate noted from s 19(4) of the Designs Act that distinctiveness must be assessed from the position of an informed user, which for the present matter the Delegate determined is likely to be a farmer, a fencing contractor, a fencing salesperson or a steel post producer. At paragraph 55 the Delegate also noted the importance of the prior art base when assessing distinctiveness:
The state of development of the prior art base is an important consideration when assessing the distinctiveness of a design. The maturity of the prior art base directly influences how the informed user will interpret differences between the design and the prior art. If the prior art base is highly developed, the informed user will generally attribute greater significance to smaller visual differences between the design and prior art for the purpose of distinctiveness. On the other hand, if the prior art base is underdeveloped, the informed user will generally require more significant visual differences between the design and prior art to avoid a finding of substantial similarity.
The Delegate agreed with Clipex that the prior art base for star pickets was “very well developed”.
As stated in paragraphs 64 to 84 of the Decision, the Delegate, considering the highly developed prior art base, the constraints imposed on the designer and the inherent functional nature of the product, was satisfied that the informed user would conclude that each of the designs is substantially different in overall impression to the alleged prior art even when particular regard is had to the visual features identified in the SoND. Accordingly, each of Clipex’s 22 designs proceeded to certification.
A design applicant has the option of including a SoND when filing a design application, and this can provide the benefit of identifying new and distinctive features of the design, particularly if the design is in a crowded field. A SoND can also be used to disclaim features in a design, such as where the design representations show certain features of the design in a dashed line format. However, the extent to which a SoND qualifies what is shown in the representations of a design has its limitations, as noted in the above decision.
Consideration as to whether a SoND is to be included should be made at the filing stage, since design applications can proceed to registration within a matter of weeks; and it’s not possible to add or amend a SoND once a design has proceeded to registration.
 GH PTM Pty Ltd trading as Griffith Hack v Clipex IP Limited  ADO 3 (5 August 2022)