Global Forum on Intellectual Property
8 and 9 January 2009
Raffles City Convention Centre
Singapore

Legal Protection for Product Design
1	One aspect of an organised society is the evolution of disciplines.  Walks of life have tended to reflect knowledge, experience or learning organised through callings, guilds, trades, unions, universities, the Church, the professions and industry associations.  Policy makers call upon these disciplines in formulating laws that are likely to reflect informed enduring solutions to known problems.  So it would be natural and orthodox for a designer of products, particularly products exhibiting features of industrial utility and thus likely to stimulate significant demand in the relevant industry, to turn to the lawyers, patent attorneys and policy makers to answer a very straightforward question: how can my design for this product be protected?  Depending upon the point on the continuum when the question is asked, the question might simply be: can I stop X doing what X is doing (which will generally be making, selling and offering for sale, put uncontroversially for the moment, “a very similar product)?
2	A designer trained in the art of industrial design or applied engineering might well think that policy makers and other organised disciplines would have evolved a settled straightforward and uncomplicated answer to each question.
3	Let us assume that the designer has developed a design for a product, that is, a three dimensional article to be made by hand or manufactured that exhibits features of shape.  The design might well subsist independently of any particular product or article but it is likely to have been conceived for application to material to configure that material to shaped features of the design for applied use as a particular product.  The features of shape might solely take their form so as to serve a technical function the product performs or other shapes might equally be possible without impairing the functional performance of the product.  Alternatively, while other such shapes might be possible, the particular shape might have evolved in the way it has simply to serve the functional purpose.  The product might take the form of a chair, a lamp, a bus shelter, a component for an industrial bucket to be fitted to a bob-cat, a design for surface ornamentation or many other configurations of design.  The development of the design is very likely to involve the production of working drawings, detailed drawings, perspective drawings and perhaps the making of a mould for the casting of a product.  
4	I want to focus on those products which are likely to have broader industrial application where real contestability and competition is likely to arise in a market.  That is the point where questions of the validity of protection and scope of infringement really matter.
5	It might be helpful to illustrate some of the issues by reference to two examples of products attracting large scale applied use.  The first is a product described as a “fence dropper” which is inserted in a fence so as to engage or catch the horizontal wires of a fence (generally restraining livestock of one kind or another) for the purpose of maintaining a constant distance between the horizontal fence wires and thus prevent distortion of the fence and contribute to the elastic strength of the fence.  Fence droppers or stabilising devices (of various kinds) are used extensively in Australia and New Zealand, the United States, and in parts of Europe.  A fence dropper will be configured with certain shapes to catch and locate the horizontal wires of the fence.  An illustration of such a product and an exploded view of such a device and the shape of the loops or catches is attached.  
6	The second product is a component part of a front end “bucket” designed to be attached to a bobcat to enable the operator of the machine to push, load or scoop material.  One such bucket incorporated a component that enabled the lower part of the bucket to open and close in a jaw-like movement thus enabling the operator to undertake a number of additional versatile functions of cutting, pulling, scraping and clasping material.  One component that enabled those functions to occur when connected to the hydraulic arms of the bobcat was a component described as a “pivot arm”.  A photograph of a side profile of the bucket together with a photograph of the pivot arm is attached.  
7	Each product and the scope of protection for it was the subject of decisions of the Federal Court of Australia in 2008.  Some of the issues taken up in this paper illustrated by reference to these products were not the subject of controversy in the particular proceedings.  
8	One straightforward answer to each question might be found by reference to the reproduction right forming part of the copyright subsisting in the foundation drawings for the product.  In Australia, working drawings, detailed drawings, perspective drawings and any work of artistic craftsmanship is an artistic work (s 10(1) of the Copyright Act 1968 (Cth)).  A drawing includes a plan.  Copyright by s 32 of the Copyright Act subsists in an original artistic work and by s 31(1)(b)(i) one of the exclusive rights is the right to reproduce the work in a material form which by s 10(1) includes any form of storage (electronic or otherwise) of the work or adaptation, or a substantial part of the work or adaptation.  A reference to reproduction of the work includes a reference to reproduction of a substantial part and s 21(3) adopts the conventional position that a two dimensional artistic work is reproduced by a version of the work in a three-dimensional form and a work in a three-dimensional form is reproduced by a version of the work in a two-dimensional form.  Provided that the work is original in the sense of the outcome of the application of work, industry and effort on the part of the author not copied from another work and the qualifying conditions are met, the owner (let us assume the designer is the owner) will by reference to ss 36, 37 and 38 of the Copyright Act be able to prevent another from doing or authorising the doing in Australia of any act comprised in the copyright and most particularly direct or indirect reproduction.  Section 37 addresses the importation of an article into Australia for the purpose of, put simply, selling the article or distributing the article for sale or any other purpose that will affect prejudicially the owner of the copyright, if the importer knew or ought reasonably to have known, that the making of the article would if the article had been made in Australia, have constituted an infringement of the copyright.  Section 38 deals with infringement by sale and other dealings.  Section 115 confers upon the owner of the copyright the right to bring an action for infringement and ss 115 and 116 particularly set out the orthodox range of remedies for infringement of copyright.  
9	Thus the owner might contend that the three-dimensional manufacture by a person (competitor) of a product either by substantial reproduction of the drawing or a reproduction of a substantial part of a drawing is a three-dimensional reproduction of the two-dimensional work.  Alternatively, the owner might contend that a three-dimensional product has been reverse engineered to produce an infringing two-dimensional drawing from which the competitor has made a three-dimensional version of the owner’s drawing.  The owner will contend that the two-dimensional transitional or facilitative drawing and the three-dimensional product infringe the copyright in the relevant drawing.  Substantiality will be determined by the Court upon examination of the foundation work and the contended infringing version.  
10	Reliance upon copyright has the advantage that copyright subsists in the work by operation of law derived from authorship and originality and the duration of copyright subsists for 70 years plus the life of the author (US Free Trade Agreement Implementation Act 2004 (Cth)).  The hand of the owner might thus reach out and constrain the manufacture and sale of articles (products) that represent a substantial reproduction or a reproduction of a substantial part of the owner’s work providing that copying (that is, direct or indirect infringement) can be established.  The subsistence of copyright in a work or reproduction of that work has nothing to do with whether the drawing relates to a functional product although three-dimensional infringement of a two-dimensional functional drawing may well raise more difficult questions of substantiality in determining infringement.
11	That straightforward answer offered to the designer is denied as a matter of policy for this reason.  Division 8 of the Copyright Act recognises that an artistic work might give rise to a corresponding design, that is, a design corresponding (in the defined sense) to the artistic work.  Corresponding design means, in relation to an artistic work, 
visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.

12	The term embodied in, in relation to a product, “includes woven into, impressed on or worked into the product”.  A number of exclusionary rules apply in relation to infringement.  The first exclusionary rule is that where copyright subsists in an artistic work and a corresponding design is or has been registered under the Designs Act  2003 (or the earlier Designs Act 1906), on or after commencement, it is not an infringement of the copyright to reproduce the work by embodying that or any other corresponding design in a product.
13	The second exclusionary rule is this.  Where copyright subsists in an artistic work (other than a building or a model of a building; or a work of artistic craftsmanship); a corresponding design is or has been applied industrially (generally the sale of 50 or more products) whether in Australia or elsewhere and whether before or after the commencement of the section containing the rule, by or with the licence of the owner of the copyright; products to which the corresponding design has been applied are sold, let for hire or offered or exposed for sale or hire whether in Australia or elsewhere (after the commencement of the rule); and at that time, the corresponding design is not registrable under the Designs Act 2003 or has not been registered under that Act or under the Designs Act 1906, it is not an infringement of the copyright in the artistic work to reproduce the work by embodiment of a corresponding design.  The scope of that exclusion of infringement is put this way:
77(2) 	It is not an infringement of the copyright in the artistic work to reproduce the 	work on or after the day on which:
	(a) 	products made to the corresponding design are first sold, let for hire 		or offered or exposed for sale or hire; or
	(b)	a complete specification that discloses a product made to the			corresponding design is first published in Australia; or
	(c)	a representation of a product made to the corresponding design and 		included in a design application is first published in Australia;

	by embodying that, or any other, corresponding design in a product.

14	A building or a model of a building does not include a portable building such as a shed, a pre-constructed swimming pool a demountable building or a similar portable building.  Section 77(3) makes it clear that non-infringement by embodiment of a corresponding design in a product does not apply in relation to any products in respect of which at the time they were sold or offered for sale, the corresponding design was excluded from registration by regulations made under the Designs Act 2003 or the earlier Designs Act 1906.  
15	The third exclusionary rule is designed to extinguish infringement of copyright by the making of a transitional two-dimensional drawing for the manufacture of a three-dimensional product embodying the corresponding design.  Section 77A is in these terms: 
77A (1) (a)	It is not an infringement of copyright in an artistic work to reproduce 		the artistic work, or communicate that reproduction, if: 
		(a)	the reproduction is derived from a three-dimensional product 			that embodies a corresponding design in relation to the 				artistic work; and
		(b)	the production is in the course of, or incidental to:
			(i)	making a product (the non-infringing product), if the 				making 	of the product did not, or would not, infringe 				the copyright in	the artistic work because of the 					operation of this Division; or
		 	(ii)	selling or letting for hire the non-infringing product, 				or offering or exposing the non-infringing product 				for sale or hire.

 (2)	It is not an infringement of copyright in an artistic work to make a 		cast or mould embodying a corresponding design in relation to an 		artistic work, if:
		(a)	the cast or mould is for the purpose of making products; and
		(b)	the making of the products would not infringe copyright 				because of the operation of this Division.

16	Accordingly, once the owner of the copyright has applied industrially a corresponding design in circumstances where that design was neither registered nor registrable, recourse to the rights comprised in the artistic work so as to restrain three-dimensional reproduction of the two-dimensional drawing by embodying the corresponding design in a product, is foreclosed as a matter of statutory policy.  The position will be preserved in relation to a building or a model of a building or a work of artistic craftsmanship as those terms are understood according to the authorities.  Moreover the bringing into existence of transitional works by a competitor to facilitate the making of a product which by operation of s 77(2) is a non-infringing product, does not amount to infringement of the copyright in an artistic work if the reproduction is derived from a three-dimensional product that embodies the corresponding design.  Similarly, it is not an infringement of the copyright in the artistic work to make a cast or mould (from a three-dimensional product embodying a corresponding design) which thus embodies the corresponding design, if the cast or mould is made for the purpose of making a product which is non-infringing by operation of these provisions limiting infringement.  
17	In the case of the pivot arm, a competitor that made a substantial reproduction of that component product was found not to have infringed the copyright in the artistic work by reason of these provisions.  This result arose as a result of the application by the owner of the copyright in the artistic work of a “corresponding design”.  The Australian position unlike that of the United Kingdom (with that jurisdiction’s “British Unregistered Design Right” and the European Community’s “Community Unregistered Design Right”) is that making a product that embodies the “visual features” of “shape” evident in a drawing for the product, such that the product is a reproduction (in three‑dimensional form) of the drawing is not an act of infringement (see s 77(2) and s 74 of the Copyright Act and in particular the definition of “corresponding design”).  It matters not that the product is utilitarian.  A corresponding design captures any visual features of shape.  Although in a transitional period prior to the commencement of s 77A, the competitor was found to have made an infringing version of the plaintiff’s two-dimensional drawing by reverse engineering the three-dimensional product so as to facilitate manufacture of the three-dimensional product, s 77A, from its commencement, extinguished any further infringement.  Similarly, the owner of the copyright subsisting in the drawings for the fence dropper would not be able to rely upon those rights to restrain three-dimensional reproduction by the making of a product incorporating the features of the drawing being a corresponding design as defined.
18	So, the question of whether our notional designer has lost the right to rely upon the reproduction right in his or her drawing will depend upon whether the designer has or intends to industrially apply the design and, of course, that is precisely what the designer will want to do.   
19	The next question is whether the work of the designer is capable of valid registration under the Designs Act 2003.  Under the Act design has this meaning:
design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.

20	By s 7 of the Act, visual feature has this meaning:
(1)	In this Act: visual feature, in relation to a product, includes the shape, 	configuration, pattern and ornamentation of the product.
(2)	A visual feature may, but need not, serve a functional purpose.
(3)	The following are not visual features of a product:
	(a)	the feel of the product;
	(b)	the materials used in the product; and
	(c)	in the case of a product that has one or more indefinite dimensions:
		(i)	the indefinite dimension; and
		(ii)	if the product also has a pattern that repeats itself – more 			than one repeat of the pattern.
21	The definition of design in the 1906 Act referred to:
features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article can be judged by the eye, but does not include a method or principle of construction.

22	The definition of visual feature now includes the shape, configuration and ornamentation of the product.  Although some commentators regard the terms shape and configuration as referrable to three-dimensional design features and the terms pattern or ornamentation as referrable to two-dimensional design features, these distinctions may not be relevant.  The only question is what is the “overall appearance” of the product “resulting from” one or more “visual features” of the product.  Those features include all of the features whether shape, configuration, pattern or ornamentation subject to the excluded factors.  Notably, the “feel” is not one of the visual features that conditions the “overall appearance”.  One question is whether the express exclusion of the feel of the product from the notion of the visual features of a product necessarily carries with it any reference to the colour or the texture of the surface of the product.  Although some commentators contend that because the term visual feature is an inclusive definition and thus references to colour and texture necessarily condition visual features, the express exclusion of the “feel” of the product may nevertheless exclude references to those features which determine the feel of the product.  My own view is that the exclusion ought to be construed narrowly and the inclusive definition in s 7(1) of “visual feature” ought to carry with it impressions on the eye determined by colour and texture.  
23	The legislature has elected to define design by reference to the notion of “overall appearance” of the relevant product “resulting from” one or more “visual features” thus removing from the definition any reference to an express exclusion of “a method or principle of construction”.  The Australian Law Reform Commission Report (No 74) recommended against express exclusion of a method or principle of construction on the footing that design protection under the new definition can only extend to protect the visual features of a product.  The election to dispense with the exclusion is not intended to convey the notion that “methods or principles of construction” are to be capable of protection as designs.  Such methods or principles would be susceptible of intellectual property protection through another route, notably through patent protection subject to all of the qualifying criteria determining the validity on such applications.  
24	By s 8, a reference to a design in the Act is “a reference to a design in relation to a product”.  A product is defined in these terms:
(1)	For the purposes of this Act, a thing that is manufactured or hand made is 	a product (but see sub-sections (2), (3) and (4))
(2)	A component part of a complex product may be a product for the purposes of 	this Act, if it is made separately from the product
(3)	A thing that has one or more indefinite dimensions is only a product for the 	purposes of this Act if any one or more of the following applies to the thing:
	(a)	a cross-section taken across any indefinite dimension is fixed or			varies according to a regular pattern;
	(b)	all dimensions remain in proportion;
	(c)	the cross-sectional shape remains the same throughout, whether or 	not the dimensions of that shape vary according to a ratio or series of 	ratios;
	(d)	it has a pattern or ornamentation that repeats itself.
(4)	A kit which when assembled, is a particular product, is taken to be that 	product.

25	A building is not a product for the purposes of the Designs Act and remains an artistic work within paragraph (b) of the definition of artistic work in s 10(1) of the Copyright Act.  Nor is there any reference in the Designs Act to other structures.  In the result a building or a model of a building is outside the scope of exclusion in s 77 of the Copyright Act, outside the notion of a product for the purposes of the Designs Act and within the bundle of rights and entitlements relating to an artistic work.  
26	Two further things should be noted about the current treatment of a design.  First, the reference to “overall appearance of the product” places emphasis upon the inherent qualities of the design.  The definition of design no longer refers to features of shape, configuration, pattern or ornamentation “applicable to an article” although the Act maintains a relationship between the design and a product (s 8).  Nevertheless, the design for a product is something separate from the product and is to be discerned by the overall appearance a product takes from one or more visual features.  Those features are to be judged by the Court assisted by expert evidence where appropriate.  Ultimately, the question of visual appearance is one of fact to be decided by the Court (Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403 at 408-9, per Lockhart J; Compagnie Industrielle de Precontraintet D’Equipment des Constructions S A v First Melbourne Securities Pty Ltd (1999) 44 IPR 512; per Merkel J.)  
27	Plainly enough functional designs were not registrable under the Designs Act 1906 which was a position consistent with the decision in AMP Inc v Utilux Pty Ltd [1972] RPC 103 for the purposes of the U K Registered Designs Act 1949.  By an amendment to the Australian Act in 1981, s 18(1) provided that an application for registration of a design shall not be refused nor a registered design rendered invalid by reason only that the design consisted of or included features of shape or configuration that served or only served a functional purpose.  That provision is the source or origin of the reference in s 7(2) (quoted above) to a visual feature that may, but need not serve a functional purpose.  Section 7(2) speaks of “a” visual feature serving a functional purpose whereas “design” speaks of an overall appearance resulting from “one or more visual features” of a product.  This might suggest some kind of deconstructionist analysis of the multiplicity of visual features which give rise to the overall appearance and a weighing of the various visual features to determine whether one or more or some or all of the inter-acting visual features serve a functional purpose.  The real point, as the Australian Law Reform Commission notes in its report, is that the new legislation (once enacted) should make it clear that designs “dictated by function” are not excluded from protection.  
28	Accordingly, the fence dropper and the pivot arm each represent a product which exhibit an overall appearance resulting from one or more visual features determined principally by shape.  Each product is a manufactured thing that exhibits shape and configuration.  Each product exhibits visual features which serve functional purposes either in whole or in part.  Each product satisfies the definition of design and might be 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” (s 15(1)).  Section 15(2) is in these terms:
(2)	The prior art base for a design (the designated design) consists of:
	(a)	designs publicly used in Australia; and
	(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 s 60 is on or after the 			priority date of the designated design.

29	By s 16(1) a design is new unless it is identical to a design that forms part of the prior art base for the design and by s 16(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.  By s 16(3) the “newness or distinctiveness” of a design is not affected by the mere publication or public use of the design in Australia on or after the priority date of the design or by the registration of another design with the same or a later priority date.  Section 17 sets out particular matters to be disregarded in determining whether a design is new and distinctive and in particular by reference to regulations.  Section 18 preserves the newness and distinctiveness of the design notwithstanding the use made of an artistic work unless:
(a)	the previous use consisted of or included, the sale, letting for hire or exposing for sale or hire of products to which the design had been applied industrially other than products specified in regulations for the purposes of paragraph 43(1)(a); and
(b)	the previous use was by, or with the consent of, the owner of the copyright in the artistic work.   

30	Industrial application has the same meaning given by regulations under s 77 of the Copyright Act.  
31	Section 19 gives direction to a person who is required by the Act to decide whether a design is “substantially similar in overall impression” to another design.  Such a person is to “give more weight to similarities between the designs than to differences between them”.  The person must also have regard to the state of development of the prior art base; any statement of newness and distinctiveness identifying particular visual features of the design as new and distinctive; if features relate to only part of the design – have particular regard to that part of the design but do so in the context of the design as a whole; 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 have regard to “the freedom of the creator of the design to innovate”.  
32	The exclusive rights of the registered owner is conferred by s 10 of the Act.  Those rights are the right to make or offer to make a product in relation to which the design is registered, which embodies the design; to import such a product into Australia for sale or for use for the purposes of any trade or business; to sell, hire or otherwise dispose of or offer to sell, hire or otherwise dispose of such a product; and related rights.  The term of registration of a design is 5 years from the filing date of the design application in which the design was first disclosed or if the registration of the design is renewed, 10 years from the filing date.
33	Infringement of the design is framed in these terms.
71.	(1)	A person infringes a registered design if, during the term of 			registration of the design, and without the licence or authority of the 		registered owner of the design, the person:
		(a)	makes or offers to make a product in relation to which the 			design is registered, which embodies a design that is 				identical to, or substantially similar in overall impression to, 			the registered design; or
		(b)	imports such a product into Australia for sale, or for use for 		the purposes of any trade or business; or
		(c)	sells, hires or otherwise disposes of, or offers to sell, hire or 			otherwise dispose of, such a product; or
		(d)	uses such a product in any way for the purposes of any trade 			or business; or
		(e)	keeps such a product for the purpose of doing any of the 				things mentioned in paragraphs (c) or (d).

34	The advantage of design registration is that it confers a monopoly for a fixed period of time which confers an exclusive right to make, import and sell a product in relation to which the design is registered which embodies the design and the scope of infringement is determined by examining whether someone has made or offered to make a product, import or sell a product which embodies either an identical design or a design that is substantially similar in overall impression to the registered design.  Provided the design is new and distinctive at the priority date the exclusive rights may well be valuable and will give protection to designs which condition the overall appearance of a product derived from visual features which serve a functional purpose.  The difficulty is that identicality will be very difficult to demonstrate.  The factors to be taken into account under s 19 in informing whether a design is substantially similar in overall impression to another design will need to be worked through in the course of the cases to determine whether this limb of infringement proves to be more useful than the tests for infringement under the old Act.  The owner of the design rights in the fence dropper and the pivot arm would not prejudice the newness or distinctiveness of the design “by reason only of any use previously made of the artistic work” although the owner of each design would need to be astute to ensure that no products were sold or exposed for sale to which the design had been applied industrially otherwise such public conduct would be fatal to the question of whether at the priority date the design remained new and distinctive.  
35	The third answer to the designer’s question of protection and scope of infringement might be to consider whether the product is distinctive by reason of its shape or for that matter made distinctive by other trademark features.  However, for present purposes the question is whether the features of design which comprehend visual features of shape or configuration embodied in a product render the product distinctive or capable of becoming distinctive through use. 
36	Section 17 of the Trademarks Act 1995 (Cth) defines a trademark as:
 “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.  

The term “sign” is defined in these terms:
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

37	The shape may include the entire shape of the product or the packaging in which the product is supplied.  By virtue of the definition, a design for a product exhibiting features of shape may be a sign, used or intended to be use to distinguish the product in the course of trade from the products of others and thus qualify as a trademark.  Of course, the use must be use as a trademark in the course of trade to distinguish products dealt with or provided in the course of trade from those of others.  
38	Two questions arise specifically in the context of shape trademarks.  The first is concerned with validity of registration and the second goes to infringement.  The principal condition for registration is that the design features (for the good or product) embodying shape must be “distinct and separate” or that class of special case “where the shape that is a mark is “extra”, added to the inherent form of the particular goods as something distinct which can denote origin” (Koninklijke Philips Electronics N V v Remington Products Australia Pty Ltd (2000) 100 FCR 90 at 104 per Burchett J, Hill and Branson JJ agreeing.)  This accords with the primary function of a trademark as expounded by the Full Court of the Federal Court of Australia in Coca-Cola Company v All Fect Distributors Ltd (1999) 96 FCR 107 per Black CJ, Sundberg and Finkelstein JJ at [25] which is “to make the goods more arresting of appearance and more attractive and thus to distinguish them from the goods of other traders”.  Examples of such goods or products where the shape might be characterised as a trademark might include the distinctive shape of a particular perfume jar or drink bottle, the triangular box shape of Toblerone chocolates, the Rubiks Cube and the semi-spherical shape of a kettle barbecue (J Baird: (2003) 52 Intellectual Property Forum: Journal of the Intellectual Society of Australia and New Zealand, p 31).  
39	Although a shape is capable of being a sign which in turn may comprise a trademark capable of distinguishing goods, the shape of a product will generally not attract registration if the purpose of the shape serves the function to be determined by the product.  That follows because the shape, in such a case, would be unlikely to distinguish the goods.  The shape would serve the purpose to which the product would be put.  Rather than distinguish the goods the shape would serve the utilitarian application of the goods.  In such a case it would be difficult to identify the differentiating factor isolating commercial origin in a trademark sense and if that is true, the shape would fail at its very centre as a trademark or as Burchett J observed in Philips v Remington (supra) at [12] (Hill and Branson JJ agreeing):
In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trademark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a “use” of the mark “upon, or in physical or in relation to, the goods” within s 7(4) or to “use” it “in relation to the goods” within s 20(1) [of the Act].

40	Kenman Kandy (2002) 122 FCR 494; [2002] FCAFC 273 was a case before the Full Court of the Federal Court which concerned the registrability of a particular shape trademark.  Stone J observed at [137] that were the introduction of shapes within the notion of a sign and thus within the scope of a trademark to enable registration of a trademark that would give the owner a monopoly over functional features, “it would indeed have made a radical change to trademark law”.  
41	Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 concerned contentions of infringement of a registered trademark for the shape of the fence dropper.  The trademark was described as one which “consists of a shape kind of sign” for goods in Class 6 of the Register described as “fence droppers” and the Certificate of Registration recorded that the trademark “consists of a rod bent to an S shape” as depicted in a Schedule to the Certificate.  The Applicants contended that because the mark had been registered and was thus taken to be distinctive (especially in the absence of a cross-claim for revocation), the only question (of relevance here) was whether the Respondent had used the mark as a trademark or whether it was correct to say that the depiction of the shape in the Respondent’s material was simply designed to exhibit or extol the features and function of the Respondent’s goods embodying the shape.  In Mayne Industries the Court observed at [66]:
There is a circularity involved when the shape in the goods is such an important functional part of the dropper that a user necessarily illustrates the S shape of the catch in the course of trade to convey shape as a distinguishing feature of the Respondent’s dropper as a badge of origin.  However such use is not use of the shape as a badge of origin, but rather a statement of the essential functional feature of the S loop inherent in the goods in the sense contemplated in Philips v Remington [citations] and in Kenman Kandy at [45] per French J and [137], [140] per Stone J.

42	The relationship between function and shape was made more pronounced in Mayne Industries as the shape had been the subject of a patent which articulated the adoption of the shape (the S loop) as a mechanism for engaging h the horizontal wires as a functional solution to the problem inherent in the prior art concerning mechanisms for stabilising and providing dynamic tension in a fence.  The shape was the feature which solved the problem.  Recourse to the registration of a trademark for the features of shape determined by function might be seen as a means of securing an enduring monopoly for an expired patentable subject matter.  As to those matters, the Court said at [69]:
The 1995 Act by enabling shapes to be registered as a badge of origin did not establish a regime under which inventors might be able to secure enduring exclusive rights of use and foreclosure of others through infringement proceedings for the shape of a functional manner of new manufacture formerly the subject of a patent, as in this case.  A shape essential to the very subject of the patent will almost always be functional as the invention must be novel and useful.  If the shape is entirely incidental to the subject matter of the patent, it is unlikely to be a shape bearing any functional element.  That is not this case.

43	The principles are comprehensively set out at paragraphs [59] to [70] of Mayne Industries.  
44	In Mayne Industries, the features of shape particularly having regard to the evidence of the evolution of the shape and the history of the patent and the solutions the shape provided to the problems of a prior art, were found to be determined by the function the product was to perform.  The Respondents contended that different shapes might have been adopted and had, in fact, been adopted from time to time for the configuration of other fence droppers.  The finding was that notwithstanding possible other shapes and evidence going to the emergence of some shapes, the particular shape of the subject fence dropper was adopted to serve the function of stabilising fence wires in the manner described (especially in the patent).   A question might well arise as to whether a trademark embodying features of shape that are partly determined by function and partly adopted to differentiate and distinguish the goods and in that sense provide something which is “extra” or something adopted expressly for the purpose of making the product “more arresting of appearance” is entitled to registration. Plainly enough, the express amendment of the Trademarks Act to provide for the registration of shape marks (otherwise meeting the qualifying conditions for a trademark) ought not, in principle, be defeated by denying registration to shape marks that embody an element of functionality.  Different considerations will arise where the features of shape are determined by the function to be performed or alternatively the features of shape are selected by reason of the function to be performed by the product.  The boundaries of these matters in relation to registrability are yet to be determined.   In the infringement context, use of a functional mark as a trademark is likely to be more easily established in circumstances where the features of shape although influenced by function are also influenced, in substance, by an intention to distinguish the contended infringer’s products by use of the shape as a trademark.  
45	Accordingly a designer that seeks to secure enduring protection for the shape or design features of a particular product by recourse to the Trademarks Act in circumstances where the features of the product are determined by function or selected for their functional characteristics, will not be afforded protection.  
46	In seeking to fulfil the designer’s expectation for a clear and well established answer to the designer’s straightforward questions I have expressly not dealt with any potential for patent protection.  That matter would have to be investigated to be satisfied of all of the qualifying criteria and in particular questions going to novelty, obviousness, inventive step, fair basing and usefulness.  
47	The dilemma confronting an Australian designer in terms of determining whether there is any scope for recourse to the Copyright Act; whether the designer’s conduct is likely to give rise to the industrial application of a corresponding design and if so whether infringement by a competitor will be excluded; whether the design reflects a new and distinctive design for the purposes of the Designs Act and whether the tests of identicality and substantial similarity might be established; and finally whether the design features for a product embodying a distinctive shape are capable of distinguishing goods in the course of trade, reflect a range of considerations each of which involve a number of important questions not dealt with in the course of this brief discussion.  In particular, considerations of the extent to which differences between a registered design and a contended infringer’s use meet the statutory tests for infringement requires close analysis and the extent to which differences between the design and the prior art confer newness and distinctiveness requires analysis.  
48	However, the problems confronting the colleagues of the notional designer undertaking faithful design work in the United Kingdom and the range of considerations such a person must take into account are more extensive.  First, (although not in this order), the designer must understand whether the remnant of the Registered Designs Act 1949 (U K) provides any continuing utility in terms of the protection of design features for a particular product or designs detached from an article or product.  Secondly, the designer will need to understand the scope and utility of the British Unregistered Design Right conferred by Part III of the Copyright Designs and Patents Act 1988 which is a statutory substitute for recourse to artistic copyright over industrial production of shaped articles.  Thus, rights arising under artistic copyright and the British Unregistered Design Right are not cumulative.  Where copyright is available, it displaces the BUDR (CDPA, s 236).  However the BUDR is distinct from a registered design yet a right which may exist in the same design features cumulatively.  Thirdly, and probably most importantly the designer will need to understand the nature of the rights conferred by Council Regulation No 6/2002 (OJEC No 3 of 5 January 2002) and particularly Recitals 3, 10, 11, 12, 13, 14, 17, 20, 21, 23, 31 and 32, and the notions of design, product, complex product, the requirements for protection of newness and individual character (Articles 4, 5 and 6), the implications of the prohibition upon a community design not subsisting in features of appearance of a product which are solely dictated by its technical function, and particularly Articles 1 to 34 (although all Articles of the regulation are important.).  Fourthly, the designer will need to understand the protection provided by the Unregistered Community Design subsisting for a period of 3 years from the date on which the design was first made available to the public within the community, operating as it does as interim protection for 12 months during an initial stage before registration is actually applied for. The relationship between artistic copyright, the BUDR and the community UDR needs to be thought through.  Finally, such a designer will need to take account of the Harmonisation Directive 98/71 EC of 13 October 1998.  A circumstance might arise where infringement proceedings are commenced in which classes of rights arising under each of these sources might be claimed and the precise scope and utility of each will be put in controversy.  
49	The content, duration, qualifying criteria for subsistence for particular rights, exclusionary rules, tests for infringement, relationship between domestic law, harmonised law and community law and the forums within which validity and infringement are to be tested and determined demonstrate that industrial designers who go about their inventive work in developing aesthetic or industrial designs in the United Kingdom have only begun their real journey upon completion of the design or as Robert Frost puts it in Stopping by Woods on a Snowy Evening:  
The woods are lovely, dark and deep.  
But I have promises to keep,
And miles to go before I sleep,
And miles to go before I sleep.

50	Four attachments described as Schedules 3 and 4 and Schedules 1.3 and 1.4 are attached.
Justice Andrew Greenwood
FEDERAL COURT OF AUSTRALIA
Thursday, 8 January 2009
Justice.Greenwood@fedcourt.gov.au