The value and power of registered design protection has
been confirmed by the United States Federal Circuit Court of Appeal
decision of 18 May 2015, upholding an earlier decision, that
certain of Samsung's smartphones infringed Apple's patented
designs directed to its iPhone.
This decision highlights the value of securing registered design
rights for the ornamental appearance of a product, particularly in
the US, with Apple reportedly set to receive damages in the order
of US$548 million.
Full credit must be given to Apple as it recognised, from the
outset, that the full commercial value of its iPhone resided not
only in its functionality but also in its aesthetic appearance as
an article of manufacture.
In Australia, and many jurisdictions around the world, this
distinction is also recognized by governments which offer
registered intellectual property systems with distinct and separate
regimes to protect both functional and aesthetic elements of a
The "patent" system serves to secure rights in the
functional aspects of a new and inventive product or process.
The "registered designs" system serves to secure
rights in the ornamental appearance of a new product or article of
These systems help businesses be rewarded for the investment
required in researching, developing and manufacturing new
Apple took advantage of both systems to protect key functional
aspects of its iPhone via the patent system, and to protect certain
ornamental design features of its iPhone via the "registered
Apple had three registered designs (known in the US as
"Design Patents") at issue in this case, each claiming
certain design elements embodied in the iPhone as shown below.
The first design focuses on design elements on the front flat
clear face of the iPhone:
The second design extends to the bezel of the iPhone:
The third design claims "the ornamental design for a
graphical user interface for a display screen or portion
There is commonly an overlap between functional and ornamental
features with some elements serving dual purposes. Samsung
contended that it should not have been found liable for
infringement of the above designs owned by Apple because any
similarity was limited to the basic or functional elements in the
designs. That is, Samsung argued that the form of those elements
which are dictated by their functional purpose should be ignored in
their entirety when determining the scope of the design. The
Federal Circuit did not agree and held that United States case law
does not support Samsung's position.
The position is similar in Australia with the Designs Act
explicitly stating a visual feature may, but need not, serve a
functional purpose. This case provides a clear example of the
commercial value associated with the aesthetic appeal of a product,
quite separate from the functionality of that product. The
registered designs system can be advantageously used to capture
this commercial value.
At Shelston IP we have had considerable success for our clients
in terms of obtaining "take down" notices for on-line
sales offerings, based on infringement of Australian certified
designs. In this regard, registered designs are particularly
useful, as most on-line agencies easily understand and recognise
design rights, whereas patent rights, for example, are more
complicated to evaluate.
Registered design protection is available in the majority of
Australia's trading partner countries, and businesses that rely
at least in part on the appearance of its products to distinguish
them and attract customers, would be well advised to follow in
Apple's footsteps of registering the appearance of new products
in an effort to capture the full commercial valuable of a new
The novelty rules, scope of protection, costs, remedies and
filing requirements for registered designs currently vary quite
substantially between different jurisdictions. Accordingly, it is
highly recommended that a suitable IP protection strategy,
including designs, be considered as early as possible in the
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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