Judging the distinctiveness of designs: the standard of the informed user

For a design to be considered a "registrable design" under the Designs Act 2003, it must be “new and distinctive” when compared with the prior art base (Section 15(1)).

A design is considered new provided that it is not identical to an existing design and distinctive provided that it is not “substantially similar in overall impression” to an existing design (Section 16).

In determining whether a design is substantially similar in overall impression, Section 19(4) of the 2003 act requires an assessment made through the eyes of a person who is familiar with the product or similar products to which the design relates. This is known as the standard of the informed user.

The concept of assessing distinctiveness from the viewpoint of an informed user is a significant departure from how designs were assessed under the Designs Act 1906. Under that act, originality of design was “judged by the eye”, where the eye was that of the assessor (eg, the court). The Australian Law Reform Commission, in its report on the Australian designs system which preceded the introduction of the 2003 act, considered that such a subjective test lacked transparency and made it difficult to predict the likely outcome of infringement proceedings (Designs Bill 2002 (Bills Digest 129, 2002-03), page 7, paragraph 4). The standard of the informed user introduced by the 2003 act is intended to provide an objective test whereby the assessor places himself or herself in the position of the informed user when considering whether a design is distinctive (Australian Law Reform Commission Report 74, paragraph 5.21).

Although the informed user standard has yet to be applied by the courts, it has been applied in a number of recent decisions issued by the Australian Designs Office, most notably in Apple Computer Inc ([2007] ADO 5 (20th September 2007)).

In Apple Computer Inc a delegate of the registrar of designs revoked a design registration in the name of Apple Computer Inc for a universal serial bus (USB) Type-A connector. Apple alleged that its design was distinguishable from standard USB Type-A connectors as it had nine electrical contacts inside the connector’s end socket, compared with four electrical contacts in standard USB connectors, which are typically used to connect peripheral devices such as digital cameras, scanners, keyboards and printers to a computer.

Apple submitted evidence from an information technology expert who had compared the Apple design with a standard USB connector. The expert stated that, in making the comparison, he quickly realised that the Apple design had nine electrical contacts instead of the usual four, and that the contacts in the Apple design were of a different width. In light of these differences, the expert considered the Apple design to be readily distinguishable from a standard USB connector. However, the delegate dismissed the view of the expert as not being that of a relevant informed user. The delegate considered that USB connectors are intended for use primarily by ordinary computer users and therefore viewed the relevant informed user to be an ordinary computer user who is comfortable buying and attaching USB connectors to peripheral devices.

The delegate considered there to be three ways that an informed user might approach the connection of a USB connector to a port:

• trying one of the two possible orientations of the connector at random;
• taking a quick look at the end of the connector to see which half contained the insulating substrate; or
• using the USB icon, commonly embossed on the body of the connector, to determine the correct orientation of the connector.

As none of these approaches involved a close inspection of the connector’s end socket, the delegate concluded that the informed user would have no awareness of the number and orientation of the electrical contacts inside the USB connector’s end socket. Therefore, the delegate further concluded that the electrical contacts in the Apple design could not make any impact on the overall impression of the product. With all other features of the Apple design being common to standard USB connectors, the delegate found that the Apple design was not distinctive.

This decision indicates that the informed user is not analogous to a person skilled in the art or expert in a relevant field, as is the case in relation to patents. Rather, the informed user may be considered an everyday user of ordinary knowledge and familiarity with the product. In particular, it highlights how the application of the informed user standard impacts on the assessment of distinctiveness. Had the delegate found the relevant informed user to be an information technology expert, the outcome may well have been very different.