Overcoming Distinctiveness Objections – Practical Strategies

When applying for design registration in Australia, one of the most common hurdles applicants face is an objection on the grounds of distinctiveness. The law is very clear, i.e. a design is only valid if it is both new and distinctive.

The Distinctiveness Test

Under section 16(2) of the Designs Act, a design is distinctive unless it is substantially similar in overall impression to a design in the prior art base.

Examiners make this assessment by stepping into the shoes of the “familiar person” or “informed user”, i.e. someone who has practical knowledge of the product in question and its alternatives. The comparison is not a microscopic search for minor differences but a holistic evaluation of the product’s overall appearance, considering elements such as shape, configuration, pattern, ornamentation, and colour.

That said, a design can be “new” but still fail the distinctiveness test. As distinctiveness requires more than just a small tweak. The design must create a meaningfully different visual impression.

Why objections arise?

Distinctiveness objections usually occur because-

• The examiner finds a prior design that looks very similar in overall impression.
• The design has only minor differences from well-known products (for example, a standard bottle shape with a slightly different neck).
• The classification or description of the product overlaps with prior art (e.g. a stool that looks like a milk crate).
• The visual features relied upon are not sufficiently visible or significant in normal use.

Key Factors Examiners Consider while accessing distinctiveness

When assessing whether a design is distinctive, examiners consider several nuanced factors that go beyond surface-level differences. One of the primary considerations is the perspective of the informed user, i.e. someone familiar with similar products in the market. The key question is whether such a person would perceive the design as making a different overall impression compared to existing designs.

The environment in which the product is typically used or viewed also plays a role. Examiners evaluate how the design appears in context, i.e. whether it’s seen up close, from a distance, while in use, or simply on display. This helps determine how noticeable and impactful the design features are in real-world conditions.

Both internal and external features are relevant, especially if internal elements are visible during use. For example, the inside of a confectionery egg may contribute to the distinctiveness of the design if it forms part of the user’s experience. Even when prior art only shows one angle of a design, examiners may infer the appearance of hidden or unshown perspectives, which can affect the comparison.

Additional features found in prior art, such as labels, markings, or colour schemes, do not automatically make a new design distinctive if the underlying structure and form remain substantially the same. However, in some cases, differences in colour or ornamentation alone may be sufficient to establish distinctiveness, depending on the nature of the product and the conventions within its industry.

Strategies to Overcome Distinctiveness Objections

If you receive a distinctiveness objection, you still have options. Here are the most effective strategies:

Emphasize Key Visual Differences

Carefully analyze the cited prior art and highlight how your design differs in its overall impression, not just individual features. Differences in proportions, curvature, or feature placement can be critical. For example, if the examiner compares two ceiling fan hubs, you may argue that the lower hub design draws the eye in a way that creates a distinct visual effect.

Focus on the Relevant Viewing Environment

Context matters, so a streetlight viewed from 10 metres above ground creates a different impression than one seen on a showroom table. Demonstrating how your design stands out in its actual environment of use can help shift the analysis in your favour.

Clarify Product Purpose and Informed User

The intended use of a product can shape who the informed user is. For example, if your design is a milk crate marketed as a stool, emphasizing its role in the furniture space rather than storage can help distinguish it from earlier crate designs. This ties directly to section 19(4), which requires examiners to consider the informed user of similar products.

Use Colour and Ornamentation Strategically

Where colour is a central feature of your design, make that clear in your representations. As courts have recognized, colour can be an important contributor to overall impression. If your design is registered in colour, differences from cited designs in that colour space may help demonstrate distinctiveness.

Respond to Hidden Perspectives and Internal Features

If the citation doesn’t show all angles, you may argue that assumptions about hidden views should not be made unless symmetry or industry practice supports them. Similarly, if your design has internal features visible during use, you can argue that these contribute to its distinctiveness.

Avoid “Mosaicing” Arguments

Examiners are not allowed to combine multiple prior designs to argue that your design is not distinctive. They must compare your design to each prior art design individually. If you see that an objection relies on a patchwork of references, you can challenge it as impermissible mosaicing.

Amend the Application Where Necessary

Sometimes, the most effective approach during the design registration process is to amend the application strategically. This can help preserve the strength of your registration while addressing specific issues that may arise during examination.

For instance, if your registration covers a common design applied across multiple products—such as a pattern used on shoes, handbags, and wallets—and one of those products fails the distinctiveness test, you can amend the application to remove that particular product. This allows the remaining items to retain protection without jeopardizing the entire registration.

In the case of kits, where the design consists of multiple components intended to be assembled, it’s important to ensure that the registration emphasizes the appearance of the fully assembled product rather than the individual parts. This helps maintain clarity and distinctiveness in how the design is evaluated.

For designs with indefinite dimensions, such as repeating patterns, it may be necessary to refine the scope of the application. Clarifying how the pattern is intended to be used or displayed can help distinguish it from prior art and establish its uniqueness. These types of amendments can be crucial in overcoming objections and securing robust protection for your design.

Provide Evidence of Market Recognition

While distinctiveness is assessed objectively, evidence showing that your design stands out in the marketplace can sometimes be persuasive. If consumers associate the design with your brand, this may reinforce your arguments that the design makes a unique overall impression.

Subject-Matter Issues, i.e. when It’s Not a Design at All

Occasionally, an objection may arise not because the design lacks distinctiveness, but because the examiner questions whether it is a “design” at all under the Act. For example, if the claimed visual features are not actually applied to a product, the application may be rejected outright. In these cases, you will need to demonstrate that the design is tied to a physical product with visible features.

The Role of Representation

The way you represent your design in the application is critical. Black and white line drawings may give you broader protection, but they also limit your ability to argue distinctiveness based on colour. On the other hand, colour representations narrow the scope but allow you to rely on colour differences as a distinguishing feature. Choosing the right representation strategy at the application stage can prevent later objections.

Working With Professionals

Distinctiveness objections can be technical and require nuanced legal and design arguments. A skilled practitioner can frame the informed user appropriately, identify the most persuasive points of visual difference, draft detailed responses to objections and also advise whether amendment is preferable to argument.

At LexGeneris, we guide applicants through every stage of the process, from anticipating objections at the application stage to responding with tailored strategies when challenges arise. Our goal is simple: to help you protect the uniqueness of your design and keep competitors at bay.

Contact us now for a free consultation.