Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Friday, May 31, 2013

Less design turns out not to be enough for Apple

By Senior Associate Lester Miller

A recent case shows that registered design protection should be sought for the first model in any product range, since later design refreshes may be improvements without themselves qualifying for monopoly protection. Without a design registration for your first model, your range may be left with no protection at all.


Good design


Designers will know all 10 of Dieter Rams' principles of good design, and may even settle on one being more important than the others – the title of his book, as little design as possible. In 2010 the world’s foremost Rams adherent, Sir Jony Ive and his 14-strong team at Apple, simplified the design of their 2008 LED Cinema Display. The designs were identical in every way except one: the glass on the later model was extended to the front face edges so that rather than an aluminium-rimmed screen, the screen's front face presented to a user a smooth, flat plate of glass.

As Rams says: less, but better. A side-by-side comparison is below:



 
                                                   
                  2008 design                                             2010 design

It may be difficult to make out, but the dark perimeter on the left picture represents a thin rim around the Display when viewed from the front, whereas the rim cannot be seen from the front on the 2010 design (ignore the dashed rectangle).

Good registrations


The registered design system protects the appearance of products that are new and distinctive. With the Designs Act 2003, Parliament intended to broaden the scope of registered designs by directing, among other things, that the similarities between designs be given more weight than the differences. In this way, arguably stronger designs were certified, which were less liable to revocation.

Other considerations can, in some cases, mean that, from the point of view of the informed user, the quality or importance of a small feature was strong, or there was a distinct lack of freedom of the designer, some designs are registered of apparently narrow scope, rather than being revoked.

The new Apple Display design was not objected to on the basis of lack of newness by virtue of the frameless feature, but it was the question of distinctiveness which troubled the Hearing Officer. 

Good evidence?


Apple couldn’t really take a trick in the hearing, and some of its evidence may be said to have taken the form of own goals.

First, the Hearing Officer was faintly critical of Apple's overstatement of the single difference between the designs in saying it four different ways.

Secondly, the Hearing Officer put a stop to Apple’s attempt, and those of other applicants in future, to make arguments based on magnified and reoriented representations of the prior art and the designs. The practice has been allowed to date, based on an incorrect IP Australia decision. All the information the Hearing Officer had to hand was clear enough and couldn’t be improved by an inappropriate amplification. The Hearing Officer's decision, he said, has to be made on the quality of prior art information to hand if it was identified by an Examiner.

Thirdly, evidence by Apple’s own expert informed user, a retail manager, was mostly rejected, and ultimately was used against Apple. For example, the Hearing Officer asserted that the person overreached their capacity as an expert and finally stood for the proposition that most informed users of electronic goods were more interested in technical specifications than appearance. Unfortunately for Apple, its own submissions regarding informed users were taken to reinforce that notion.

Fourthly, the Hearing Officer's own enquiries on www.cnet.com fatally reinforced that informed users prioritised technical specifications over appearance. Nobody in his sample seemed to notice the improved rimless form of the display.

The Hearing Officer succinctly discussed the weighting he assigned to each one of the factors to which he should have regard. In summary, he found that Apple had plenty of freedom to innovate and he applied greater weight to the similarities than the differences, in particular light of the legislative intention of the Designs Act to strengthen design protection. The Hearing Officer even gave Apple the benefit of the doubt regarding an imperfectly drafted Statement of Newness and Distinctiveness. Ultimately, the design was revoked because, after applying those tests and weightings, it was found to be substantially similar in overall impression to its predecessor.

Lessons


The decision shows that IP Australia will now be unwilling to be shown magnified images of any prior art or registered design materials that they already have to hand. It is not to be for the parties to adduce their own evidence of the prior art found by an Examiner.

The decision may give hope to designers that IP Australia is willing to broaden the scope of design registrations.

Finally, it seems that Apple now has no design protection for its LED Cinema Display range in Australia - there is no record on IP Australia’s database showing that Apple obtained design protection in Australia for the 2008 model.

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