Apple Inc [2025] ADO 4 (24 December 2025)

Designs Act 2003 (Cth) - Examination of designs under section 63 - incomplete image of design in prior art - design not identical or substantially similar in overall impression to prior art - design new and distinctive - certificate of examination to issue.

1. This matter concerns registered design 202317944 ('Design') which has been registered under the Designs Act 2003 (Cth) ('Act').[1] The Design was entered on the Register of Designs ('Register') with the following particulars:

Representations: (see Schedule 1 for complete representations)

Convention details: Date: 3 June 2023 Number: 29/893889 Country: United States of America

1. The Owner sought examination of the Design under s 63(1). During the examination, the Examiner raised prior art as citations against the Design in two written reports ('Citations'). These Citations are registered designs 202315803, 202315804, 202315805, 202315806, 202315807, 202315808, 202315809, 202315810, 202315811, 202315812, 202315813, 202315816, 202315817, 202315818, 202315819, 202315820, 202315821 202315822, 202315823, 202315824, 202315825, 202315826, 202315827 202315828, 202315829, 202315830, 202315831, 202315832, 202315833, 202315834 and 202315835. In the interests of brevity, I reproduce comparative images of just two of the Citations at Schedule 2 to these written reasons. These consist of Designs 202315803 and 202315817.[2]
2. An issue in the examination of the Design was the presence in the Citations of an element appearing to be a cushion as part of head-mounted display goggles, for example for an augmented or virtual reality purpose ('Outer Elements'). These Outer Elements are integrated into the head-mounted display and I extract two examples of this portion from amongst the Citations below:

[3] [4]

1. After considering submissions from the Owner's Attorney the Examiner maintained objections based on the Citations. This meant that the Examiner considered that the Design was not new and distinctive.
2. The Owner requested a hearing on the examination of the Design and I was allocated the matter. I invited the Owner to file any written submissions or evidence by 1 October 2025. On that day, the Owner filed written submissions ('Owner's Submissions') prepared by its representative FPA Patent Attorneys Pty Ltd.
3. I have now considered the matter as a delegate of the Registrar of Designs ('Registrar'). I am to decide this matter with reference to the examination reports, written responses and the Owner's Submissions. This process is not a review of the examination, though I do refer to the examination history of the Design 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'.[5]
2. Section 15 provides:

(1) A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.

(2) The prior art base for a design (the designated design) consists of:

(b) designs published in a document within or outside Australia; and

(c) designs in relation to which each of the following criteria is satisfied:

(i) the design is disclosed in a design application;

(ii) the design has an earlier priority date than the designated design;

(iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.

Note: For document, see section 2B of the Acts Interpretation Act 1901.

1. 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 be conducted by reference to the factors prescribed in s 19. Section 19 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. An entry on the Register which has been made available for public inspection under s 60 may qualify as prior art under s 15(2)(c), even where its actual date of publication is later than the priority date of the Design. The ultimate requirement for this category of prior art is that the priority date of the eventual Register entry be earlier than the design currently under examination
2. The Citations were registered on 26 October 2023 and each have a priority date of 6 March 2023. The first time documents disclosing each of the Citations were made available for public inspection under s 60 (26 October 2023) by publication on the Register, was after the priority date of the Design (3 June 2023). As such each of the Citations forms part of the prior art base due to s 15(2)(c).

1. It is useful to next turn to what exactly was made available for public inspection under s 60. This determines the subject matter with which I must compare the Design. The main issue that has arisen in these proceedings is what is sometimes termed the issue of 'incomplete views' or the 'quantum of disclosure' of the prior art.
2. In J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd, Gummow J stated of the analogous required event of a 'publication' under the Designs Act 1906 (Cth) that:

...if such material is to constitute prior publication, then the reader must from a fair perusal of the material be able at least to see the design in his mind's eye and the design or something substantially the same as the design should be disclosed with reasonable clarity.[6]

1. I have noted that the views in the Citations are drawn in simple lines indicating the presence of a cushion with corresponding curvature to that in the Design. The Owner submits that the views of the cushion element shown in the Citations are not fully visible and this means that not one of the Citations deprive the Design of newness and distinctiveness.
2. Part 14.2 of the Designs Examiners' Manual of Practice and Procedure ('Manual'), which states:

There will be situations where a citation does not explicitly show all the visual features of a design. For example, the citation might show an image of a product from just one angle. In this situation the examiner needs to consider whether the impression obtained from the particular viewing angle allow for a reasonable assessment not only of the visible angle, but also other angles. A factor relevant to whether such an assessment can be reasonably made is whether there is relevant symmetry in such products - such that the visible features can be said to fairly represent the hidden features.[7]

1. I extract for reference below an enlarged view of Figure 8 of the Design which shows what I term the 'Underside Elements' through these written reasons:

1. I agree with the submissions of the Owner that the clip lock elements ('Clip Lock Features') and Underside Elements which contain them are of importance here. These elements are significant features by which a person would be likely to integrate this product as part of a larger complex product and assess its compatibility to do so. These features have visual characteristics which are not present in any of the Citations. The shape and configuration of these features is not entirely dictated by function although they do perform a function. There are many different potential visual appearances for the Underside Elements, connecting to a cushion and forming the Outer Elements. The Underside Elements, including the Clip Lock Features are not at all shown in the Citations.
2. In World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd ('Tempo') Jessup J stated:

... I consider that the design as applied for and subsequently registered is substantially similar in overall impression to the design disclosed in the Suzhou Fak brochure of April 2005. Although shown on the brochure in front perspective view only, the impression obtained from that angle permits the viewer to make a reasonable assessment not only of the side, but also of the front, of the vacuum cleaner. Assuming, as I do, that the product is symmetrical, I take it that the other front perspective view would convey the same impression. Further, the item is displayed on the brochure in such a way as to permit the viewer to gain a reasonably good impression of the appearance of the product from the top. The only faces of the product which it is impossible to perceive from the brochure are those of the rear and of the underside. Notwithstanding these omissions, I consider that the vacuum cleaner is sufficiently represented on the Suzhou Fak brochure to give a good impression of the appearance of the design of the product as a whole, as required by s 19(3) of the Designs Act. Taking that approach, I find that the design for which the applicant applied for, and subsequently secured, registration is substantially similar in overall impression to that which appeared on the printed brochure for the MC-801 vacuum cleaner distributed at the Canton Fair in April 2005. The latter was a design published in a document outside Australia and was, accordingly, part of the prior art base for the purposes of registrability.[8]

1. In Bitzer Kuehlmaschinenbau GmbH ('Bitzer') the delegate expanded on these points noting:

The examiners' second reports note that a large proportion of the available images of the Earlier Designs are identical to the corresponding views of the Designs, leading me to infer that the hidden angles of the Earlier Designs would follow suit. I am drawn to make that inference. All of the Earlier Designs are the Owner's. Any significant differences between the Designs and the hidden aspects of the Earlier Designs should help defuse the examiners' objections. The Owner was in the best position to lead evidence of this, but did not.[9] Instead, in response to the examiners' reports the Owner pointed to a number of relatively small differences present in the Designs (that is, as a proportion of that part of the products able to carry features of shape or ornamentation).[10]

The Designs Manual of Practice and Procedure ('the Manual') notes that '[i]t will frequently be the case that a citation does not expressly display the cited product from all perspectives.' This is because many publications containing images of designs, such as advertising materials, only show the product from a single angle. IP Office databases also only occasionally show the entire design. As far as I am aware, only the USPTO requires full disclosure of all angles of a design as a prerequisite for registration. Australia certainly does not. If it were the case that all angles of a design in the prior art base were required before it could form the basis of an objection this would severely constrain the ability of the Registrar to conduct effective examination of registered designs. This would in turn mean that many designs that are not new and distinctive would pass examination, against the intention of the Act.[11]

1. It is notable that the Citations as prior art each consist of only drawings and that the representations for the Design appear to be in the form of computer aided-design images. The comparison of the representations for the Design and the drawings of the Citations has the added complication of the Citations being theoretical rather than actual in what they depict, for example a photograph. This differentiates the matter before me and the situations in Tempo and Bitzer. It may even be the case that the Clip Lock Features and Underside Elements had not been conceived of or finalised as at the priority date of the Design. The considerations in Bitzer where the Delegate noted that the Owner was best placed to clarify the appearance of hidden features of an object pictured in a photograph forming a citation do not neatly fit the situation before me.
2. Major portions of the Citations are not visible, specifically those in the Underside Elements. There is no reliable way in which I might reasonably infer that detail into the Citations on my assessment. For example, these are quite plainly not symmetrical on both sides. There is a large amount of freedom for the creator about how the Underside Elements might appear. There is insufficient disclosure by the Citations such that, for example, a person would have necessary information to make products to the Design, and a level of arbitrariness would be required to settle on that aspect of its visual features. Indeed, working from any of the Citations, it might be assumed that there are no Underside Elements at all. It is possible that the cushion and the rest of the product are all a single piece, or that the padding is initially separate but the Underside Elements consist only of a smooth surface so as to readily and permanently be fused or glued to the rest of the product. I do not consider that the Clip Lock Features, for example, are a logical extension or capable of being fairly inferred from what the Citations do show. As there is no reasonable way in which I might do so, I refuse to infer any feature for the Underside Elements into the Citations.
3. Accordingly, the comparison I must make is between the representations for the Design and solely what is visually shown in the Citations, with reference to the considerations outlined in s 19.

1. Schedule 2 below serves as a representative extract of the Citations compared side by side with the Design. However, I again confirm that I have considered and compared the Design alongside each of the individual Citations.
2. There are clear differences in terms of Underside Elements not being visible in the Citations. My observations in terms of what is and is not shown in the Citations are also applicable here. This results in differences with the Design. I do not consider the Design to be identical to any of the Citations.
3. Accordingly, I am satisfied that the Design is new when compared with the prior art before me.

1. In determining whether a design is 'distinctive' when compared with the prior art base I must turn my mind to the considerations in s 19 from the perspective of the person familiar with the product to which the design relates, and similar products.[12]
2. The familiar person appears to be a person who is familiar with cushions for technological devices and peripheral devices, particularly those worn around the eyes. These devices have a specific purpose which is apparent from the appearance in the Design. The state of development of the prior art base is also an important consideration and intersects with that notional person. The state of development of the prior art base appears developed such that there is variation in the cushion shape and in the manner it wraps around the face of the user. There is also in the prior art base variation in the depth and width of the cushion. Many cushions have a consistent depth across the plain of the objects. The cushion acts as a buttress between the face of a person and the harder parts of the device to which cushion affixes. Whilst not ruling out the possibility, the prior art base as indicated by the examination research shows few examples of a clip on/off attachable cushion element for headwear, let alone any example which even visually approximates the dispersed centralised pill shape pin elements present in the Design by the Clip Lock Features.
3. I must assess whether the Design is substantially similar in overall impression where compared with each of the Citations. I note that there is no statement of newness and distinctiveness ('SoND') present in the application for the Design. Accordingly, I make the relevant comparison with reference to the appearance of the design as a whole rather than for example by particular regard to any part.[13] However, viewing the nature and quality of any similarity must be in the context of the Design.[14] The similarity exists solely in Outer Elements of each design. The smoothness and shape of this is at least influenced by considerations that place limitations on the freedom of the creator to innovate, though the dimensions are not necessarily nor entirely dictated by those limitations. I acknowledge that that the familiar person would likely view the Outer Elements forming the cushioning portion as important. However, the product in this case is a cushion for a head-mounted display. This is likely integrated wholly or clip locked onto a walled surround element or on a headset, which is to fit around a human face. The surface of this is likely limited by the shape of the general approximation of a human face in the forehead, the bridge between eyes and parts of the face surrounding the eyes. I also acknowledge that the Clip Lock Features perform a function: to provide a means to affix. However, there is wide freedom of the creator of the Design in terms of attachment or other mechanisms and how they are presented.
4. There is also a contrast in the Design in the areas of the Outer Elements and the Underside Elements in terms of colour and finish. The Outer Elements bear a light grey mesh, folded over at a seam with the Underside Elements. The smooth black plain forming the Underside Elements, is nested in the Outer Elements. This is represented, for example, in the following figures in the representations:

1. The following magnified image of Figure 3 further illustrates the contrast in colour and surface texture of Outer Elements and the Underside Elements present in the Design:

1. Overall, I consider the shape of the Underside Elements as well as the contrast in colour and texture of the Underside Elements and Outer Elements to provide important contextualising quality for similarities in the shape and other features.
2. I have had regard to the appearance of the Design as a whole and given more weight to the similarities rather than differences. However, each of the Citations lack important visual details, which by contrast are present in the Design. When I undertake the required comparison and weigh the considerations in s 19, I am not satisfied that the Design is substantially similar in overall impression with any of the Citations.
3. Accordingly, the Design is new and distinctive when compared to the prior art base.

1. I am not satisfied that a ground for revocation exists. As such, examination of the Design has been completed and a certificate of examination may now issue for Australian design number 202317944.

[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) ('Act').

[2] Images of all of the Citations are currently available for inspection on Australian Design Search (https://search.ipaustralia.gov.au/designs/).

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

[6] [1989] FCA 419, [31] cited with approval in Ames Australasia Pty Ltd v AgBoss Australia Pty Ltd [2021] FCA 902, [7] (Wheelahan J) in relation to the Act. See also, Rosedale Associated Manufacturers Ltd v Airfix Products Ltd (1957) RPC 239, 244 (Lord Evershed MR), where the relevant design could only be properly discerned by someone who read the specification with 'close attention and great patience' and with 'a certain amount of ingenuity'.

[7] This passage in the Manual cites World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114, [61] (Jessup J) ('Tempo').

[9] Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 (Taylor J).

[10] [2015] ADO 1, [24] (Hearing Officer Lyons).

[12] The application for registration of the Design was filed after 11 September 2021. Therefore, the amendments brought about by Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) are applicable. I adopt the specific language in the formulation of the relevant considerations and their application in this matter.