Apple Inc [2025] ADO 3 (10 November 2025)

Designs Act 2003 (Cth) - examination of two designs under section 63 - application of factors mentioned in section 19 - prior art not identical or substantially similar in overall impression - designs both new and distinctive - certificates of examination to issue.

1. This matter concerns two designs ('Designs') which have been registered under the Designs Act 2003 (Cth) ('Act').[1] The Designs were entered on the Register of Designs with the following particulars:

(see Schedule 1 for complete representations)

Convention details: Date: 4 June 2023 Number: 29/877245 Country: United States of America

Statement of newness and distinctiveness: Newness and distinctiveness is claimed in the features of shape and configuration shown in solid lines in the representations.

(see Schedule 2 for complete representations).

Convention details: Date: 4 June 2023 Number: 29/877245 Country: United States of America

Statement of newness and distinctiveness: Newness and distinctiveness is claimed in the features of shape and configuration shown in solid lines in the representations.

1. The Owner sought the examination of the Designs under s 63(1). During the examinations, the Examiner raised and maintained the same citation against each of the Designs in two separate written reports ('Citation'). The Citation was published on the Google Shopping website dated 11 April 2023. I reproduce images of the Citation below:

1. After considering submissions made by the Owner's Attorney, the Examiner maintained the Citation which meant that each of the Designs are not new and distinctive.
2. On 2 December 2024, the Owner requested to be heard by way of written submissions. After I was allocated the matter, I set a nominal hearing date of 11 August 2025 and invited the Owner to file its written submissions and any new evidence by that date. On 8 August 2025, the Owner filed written submissions ('Owner's Submissions') prepared by FPA Patent Attorneys Pty Ltd.
3. I am to decide the matter as to both Designs as a delegate of the Registrar of Designs ('Registrar'). I decide this matter with reference to the examination reports, written responses and the Owner's Submissions. This decision is not a review of the examination, though I do refer to the examination history of the Designs in determining this matter.

1. Section 63(1) provides that a registered design must be examined if any person requests, or a court orders, the Registrar to do so. The process of examination of a design involves the consideration of whether a design should be revoked because, inter alia, it is not a 'registrable design'.[2]
2. A 'registrable design' is a design that is 'new' and 'distinctive' when compared with the 'prior art base' for the design as it existed before the priority date of the design.[3] In this matter, each of the Designs has a priority date of 4 June 2023 for both Designs. The 'prior art base' relevantly includes designs publicly used in Australia and designs published in a document within or outside Australia.[4] The Citation falls within the prior art base.
3. The Act defines what amounts to a 'new' and 'distinctive' design in s 16, which provides:

Designs that are identical or substantially similar in overall impression

(1) A design is new unless it is identical to a design that forms part of the prior art base for the design.

(2) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design (see section 19).

1. Determining whether a design is 'distinctive' requires the assessment by reference to the factors prescribed in s 19 which relevantly provides:

Factors to be considered in assessing substantial similarity in overall impression

(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.

(a) have regard to the state of development of the prior art base for the design; and

(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:

(ii) if those features relate to only part of the design--have particular regard to that part of the design, but in the context of the design as a whole; and

(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and

(d) have regard to the freedom of the creator of the design to innovate.

(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.

(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).

1. For convenience I set out the Designs and the Citation side by side below:

1. On a side by side comparison, it is clear that each of the Designs are not identical to the Citation, as they have, for example, much noticeably different edges. Accordingly, the Designs is 'new'.

1. To determine whether a design is distinctive, a decision maker is required to carefully analyse the factors prescribed in s 19. This analysis involves a studied comparison of the overall impressions conveyed by the respective designs.[5] Section 19(1) expressly provides that more weight is to be given to the similarities between the designs than to differences between them. I now compare each of the Designs with the Citation.
2. Section 19(4) prescribes that a decision maker must consider the factors in s 19 from the perspective of a person (the 'familiar person') who is familiar with the product to which the design relates, or products similar to the product to which the design relates. Thus, the familiar person is a notional person who is familiar with the products to which the Designs relate, or similar products. It is not necessary for a familiar person to be an actual user of the products, though familiarity can be acquired through use. In the present case the familiar person is someone who is familiar with this specific product, or similar products. For each of the designs, the product is described as a 'battery'. In a world with an ever increasing selection of portable electronics, and in the midst of a shift from centralised baseload power and dispatch to networked energy accumulation systems that incorporate very large batteries, the notion of what is a 'battery' is broad, ever changing and expanding. If I only had this word to consider, it would be difficult to approximate and distil the perspective of the familiar person. Helpfully, the connection ports disclosed in the representations readily reveal that this is in fact a specific form of battery, commonly referred to as a 'power bank'. That is, this species of battery is connected by cable to directly recharge other electronic devices, particularly where mains power is unavailable or inconvenient. I recognise that the familiar person is not strictly confined to a single class of persons,[6] though I approach the s 19 analysis with the perspective of a person familiar with batteries, including power banks, or similar products, in mind. I note that the approaches of the searches performed in the examinations are consistent with this approach, and similar approaches have been followed in past decisions.[7]
3. The state of development of the prior art base for the design is also an important consideration when deciding whether a design is distinctive.[8] The maturity of the prior art base directly influences how the familiar person will interpret differences between the design and the prior art. If the prior art base is highly developed, the familiar person 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 familiar person will generally require more significant visual differences between the design and prior art to avoid a finding of substantial similarity.
4. In Keller v LED Technologies Pty Ltd,[9] Besanko J, in addressing the distinctiveness of a design for the purposes of validity and the assessment under s 19(2)(a), referred to and endorsed the approach in Dart Industries Inc v Decor Group Pty Ltd[10] ('Dart Industries'). In Dart Industries Lockhart J stated in respect of the Designs Act 1906 (Cth):

The scope of a registered design must be determined with reference to the background of the prior art at the priority date and questions of infringement and novelty or originality are connected. In Hecla Foundry Co v Walker, Hunter & Co (1889) 14 App Cas 550 Lord Herschell said at 555: "... one may be able to take into account the state of knowledge at the time of registration, and in what respects the design was new or original, when considering whether any variations from the registered design which appear in the alleged infringement are substantial or immaterial."

Where novelty or originality is discovered in slight variations, there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design. Lloyd-Jacob J in Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1956] RPC 360 at 364 said that the court would have regard to what was "known and old", and: "... if the particular features which provide a novel conception have not been reproduced in the alleged infringement, the similarity of appearance between the article complained of and the registered design if present must necessarily reside in the common possession of characteristics which are free to everybody to employ." See also Macrae Knitting Mills Ltd v Lowes Ltd [1936] HCA 43; (1936) 55 CLR 725 per Dixon J at 731 and L J Fisher & Co Ltd v Fabtite Industries Pty Ltd (1978) 49 AOJP 3611 per Fullagar J at 3620.

Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement...[11]

1. Justice Burley in GME Pty Ltd v Uniden Australia Pty Ltd ('GME') noted the following in respect of s 19(2)(a):

In Keller, a submission advanced on appeal (at [230]) was that, whilst "mosaicking" of the prior art was impermissible, the primary judge erred by confining the provisions of the Act to a design-by-design comparison which would, it was submitted, make it easier to qualify for registration. In those circumstances, the Act should be read as requiring a close examination of the prior art base "as a whole". That submission was rejected. The Full Court endorsed the relevant statements of principle of the primary judge as applicable to the question of infringement (at [260]). The relevant statement of the primary judge in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; 80 IPR 85 is at [55] (Gordon J):

Secondly, contrary to the Respondents' submissions, distinctiveness is to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art: s 15(1) read with ss 16(1) and (2). Part 4 of Chapter 2 of the 2003 Designs Act must be read as a whole. The Respondents cannot, as they do, simply selectively choose ss 15(1) and 19(2) to support their contention that a comparison is made of the design with the totality of the entire relevant prior art base for that design whilst ignoring the express words of the rest of Pt 4 including ss 16 and 19(1). It is those sections which expressly provide that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. As a result, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being distinctive: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [60]; Karen Millen Ltd v Dunnes Stores Ltd [2008] ECDR 11 at [82]-[84] (stating that the registered design must be assessed with regard to particular prior designs rather than a hypothetical amalgam of a number of prior designs). See also Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21; (2007) 235 ALR 202 (upholding the validity in the patent context of a combination of features known collectively in the prior art).[12]

1. In GME, Burley J, also in addressing s 19(2)(a), noted that a survey showing specific examples of prior art indicated that a number of features of the prior art devices were common to the product in question being microphones.[13] The survey of the examples of prior art in GME was specifically focused on examples of a certain type of microphone, being handpieces for a radio handset.
2. In Apple Inc, a delegate of the Registrar, in finding certain designs distinctive over the prior art base, noted:

It is not controversial to observe that the differences between the Citations and the Designs are few and the similarities many. This is not necessarily fatal to the registration of the designs. Given the state of the prior art base, informed users are likely to be accustomed to identifying designs by looking at smaller differences.[14]

1. As to the Designs before me, during their examination there were several examples of prior art uncovered which reflect the state of development of the prior art base for the Designs. I accept that power bank type batteries, as is indicated by the prior art before me, have a diverse range, including many having varied edge curvatures on overall rectangular shapes. The familiar person would appreciate the prior art base as being highly developed and they are likely to place greater significance of smaller differences between each of the Designs and the relevant prior art in that respect. I accept that the state of development of the prior art base for the Designs is notably such that there are numerous designs of this type of product which are overall rectangular in shape with soft filleted edges and a pill side profile shape.
2. Pursuant to s 19(2)(b) of the Act, I must have regard to the visual features identified in the Statement of Newness and Distinctiveness ('SoND'). In this instance, the SoND for each of the Designs provides 'newness and distinctiveness is claimed in the features of shape and configuration shown in solid lines in the representations'. The representations for design 202317992 is executed in solid lines throughout, and shows no features other than shape and configuration. Its SoND therefore requires that I pay particular attention to everything shown. The representations for design 202317993 include some broken line. That broken line appears to relate to matter showing pattern and ornamentation, not shape and configuration. As such I have in my assessment paid particular regard to the shape and configuration of design 202317993.
3. Section 19(2)(d) provides that I must consider the freedom of the creator of the design to innovate. The creator's freedom to innovate is said to be interwoven conceptually with that development of the prior art base. It is important to note that that industry norms, visual flourishes common to the trade or otherwise particularly coveted features can directly curtail the creator of a design in terms of their potential scope for innovation.
4. In Watson Webb Pty Ltd v Comino,[15] Halley J found that certain registered designs were distinctive over another design for a valve. In finding such, Halley J acknowledged that the internal threads for the valves 'should be given comparatively reduced weight as they are almost exclusively functional, driven by standard pipe dimensions, leaving little in terms of freedom to innovate for the purposes of s 19(2)(d) of the Designs Act'.[16] However, Halley J did not accept the applicants' submission that a locking wing handle was a purely functional decision. Instead, finding (emphasis added):

The creator of the design of the locking wing had substantial freedom to innovate in relation to shape and dimension of that feature. The locking wing handle was a significant and prominent feature of the Designs, which was not present in the C6827 Valve. It was both visually obvious and distinctive. Neither the functional dimension to the locking wing handle, nor the number of similarities between the Designs and the C6827 Valve, detracts from the significance of the difference in the overall appearance from a design perspective between the C6827 Valve (as shown in the C6827 Design Drawing) and the Designs ...[17]

1. In the matter before me, I have found that the prior art base is highly developed. It is apparent from the level of development in the prior art base that there are certain constraints as to the design of a power bank type battery. For example, batteries generally must contain the chemical and other contents safely and yet also be practically shaped. These requirements to some degree are concerned with ergonomics and portability achieved by shape and managed physical presence. This portability would include the ability to place the battery in a pocket or pouch. It is less likely, though not impossible, that a battery would have a port in a place other than a side portion of the battery as its presence on the face of the battery might impact the ability to store it, for example, in a pocket while a cable is attached. The familiar person would recognise these inherent functional considerations and understand that they could impact the general appearance of a power bank type battery. However, I am not satisfied that the constraints, for example, go as far as dictating an overall flat rectangular shape.
2. Section 19(2)(c) prescribes that I must consider amount, quality and importance of the similarities in the context of the design as a whole. Whilst similarities are given weight, the comparison is not to be conducted solely by an analytical listing of similarities and differences. The test is one based on overall impression. Section 13.6 of the Designs Examiners' Manual of Practice and Procedure Manual provides that:

The reference to overall impression requires consideration of the product as a whole, not just the part of the product where the particular visual features of the design are located. ... However, mere similarity is not sufficient - there must be substantial similarity. That is, there must be ample commonality in the overall impression

1. The similarities between the designs include an overall pill shape profile, rectangularity in overall plain or face shape, as well as soft curved fillet edges. The other similarities noted are of less impact and include the minimal ornamentation, the smooth surfaces, centrality of the functional ports. All of the similarities must be viewed in the context of the each of the Designs as a whole. I acknowledge that the fillet edge of the Designs and the Citation each bear curvature of some kind. However, there is a flatter rectangular surface face combined with a more pinched quality to the filleting in the Designs. This makes the transition between each of the faces of the Designs starker. Further, the overall shapes of the Designs are thinner than the Citation. This hints at a higher level of portability or practicality for the familiar person, by comparison to the bulk and bulbosity visually apparent in the Citation. That bulbosity also contextualises the rectangularity present in the Citation and sets it apart from that in the Designs. I view the different overall shapes and different filleting of the edges with more prominent corners to be important context by which I must view the similarities mentioned. The rectangular face of the Citation also bears four centrally located and distinct dots arranged horizontally. Whilst there is also some commonality in the placement of the ports, there are also differences in the aperture shapes, with those of the Designs being more open and oval compared with the more strictly rectangular equivalents in the Citation. When I view the amount, quality and importance of the similarities in the context of the designs each as a whole, these similarities are less important and do not in the end greatly weigh in favour of a finding of similarity.
2. I have given particular regard to the features in solid lines as required by the SoND and given more weight to the similarities rather than differences. However, the Citation has a strikingly bulkier visual appearance. By comparison, the Designs are slimmer, flatter and less bulbous in appearance. The overall shapes have importance here and this is underscored by the SoND which is directed to almost the whole shape of each of the Designs. The curvature on the edges of the Citation is rounder and more continuous when compared to that of the Designs. The transitions between the different plains of the Citation are visually not interrupted in the manner present in the Designs. Important in each comparison has been the state of development of the prior art base which indicates both that the field is crowded and, in such a context, these differences are notable.
3. Ultimately, when I make the comparison and weigh the considerations in s 19, I am not satisfied that either of the Designs are substantially similar in overall impression with the Citation.
4. Accordingly, the Designs are new and distinctive when compared to the prior art base.

1. I am not satisfied that a ground for revocation exists. As such, the examinations of each of the Designs has been completed.
2. Certificates of examination may now issue for each of Australian design numbers 202317993 and 202317992.

[1] Unless I have otherwise specified, throughout these written reasons a reference to a section of an enactment is a reference to a section in the Designs Act 2003 (Cth).

[2] Section 65(2)(a).

[3] Section 15(1).

[4] Section 15(2).

[5] Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743, [55] (Yates J).

[7] For example, Apple Inc [2017] ADO 2 (Hearing Officer Richards) and Apple Inc [2017] ADO 5 (Hearing Officer Richards) ('Apple') where the product name for the design was 'electronic device' and the delegate considered that by the representations this appeared to depict a 'smart phone'; and Ferrari SpA [2020] ADO 3, [20]-[21] (Hearing Officer Barbey) where the product name for the design was 'car or toy car' and the delegate noted it was apparent from the representations that what was depicted was a 'sports car'. See also, Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd [1987] HCA 37, [6] (Wilson, Brennan, Deane, Dawson and Gaudron JJ) where the High Court appears to have viewed the relevant design which had the name 'combination handle and lock for shutter doors' as being more specifically for 'an article combining a plate in which a keyhole is set and a recessed handgrip'.

[8] Section 19(2)(a).

[9] [2010] FCAFC 55, [235]-[238] (with Emmett and Jessup JJ agreeing).

[10] [1989] FCA 49; (1989) 15 IPR 403.

[12] [2022] FCA 520, [34].

[14] Apple (n 7) [35] (Hearing Officer Richards).

[15] [2025] FCA 871.