Statement of Newness and Distinctiveness

While optional, a well-drafted Statement of Newness and Distinctiveness can make a significant difference in how your design is examined, how its scope is interpreted, and ultimately how well it stands up to scrutiny.

Newness and Distinctiveness

The validity of a design registration hinges on whether the design is both New, i.e. not identical to anything in the “prior art base” (any design published worldwide or publicly used in Australia before your filing date) and distinctive, i.e. not substantially similar in overall impression to a prior design.

Examiners test these criteria by looking at earlier designs through the eyes of a “familiar person” or “informed user”, i.e. someone experienced with the type of product. They will compare your design against published images and publicly used products to assess whether it looks sufficiently different.

The Role of a Statement of Newness and Distinctiveness

The Statement of Newness and Distinctiveness is your opportunity to point out which visual features of your design are new and distinctive. While examiners will still look at the overall impression, the Statement of Newness and Distinctiveness directs them to the features you consider most important.

For example, “Newness and distinctiveness is claimed in the configuration of the handle and the arrangement of perforations along the blade”, or “Newness and distinctiveness resides in the colour combination applied to the outer casing.”

By identifying these features early, you focus the examiner’s attention, clarify the scope of your claim and reduce the risk of misinterpretation.

Formalities Assessment

When a design application is submitted with a statement of newness and distinctiveness, it undergoes an initial formalities check. During this stage, the examiner reviews the statement to ensure it meets clarity and compliance standards. This review is crucial for establishing the scope of protection and ensuring the application aligns with legal requirements.

One of the key checks involves identifying any scandalous or offensive material. If the statement contains inappropriate content, the applicant will be asked to amend it before the application can proceed. Another common issue is inconsistency between the statement and the product representations. For example, if the drawings show a mug but the statement describes a vehicle, this mismatch will be flagged and must be corrected.

That said, only one statement of newness and distinctiveness is permitted per application. Including multiple statements can lead to confusion about what features are being claimed, prompting the examiner to request clarification.

If the examiner identifies issues that do not outright prevent registration but still pose complications, the applicant is typically given two months to make the necessary amendments. This allows the design to move forward while ensuring the statement accurately reflects the product and complies with formal requirements.

When does the statement not serve the intended purpose?

The statement of newness and distinctiveness is intended to highlight the specific visual features of a design that make it new and distinctive. However, not all statements successfully fulfill this purpose. Issues commonly arise when the statement is unclear or poorly worded, making it difficult to understand.

Problems also occur when the statement includes irrelevant details that do not pertain to the visual aspects of the design. In some cases, the statement may refer to inventions or abstract concepts rather than focusing on the design’s appearance. Citing external publications, such as a company website, is another misstep, as these references fall outside the scope of the design itself.

That said, attempts to disclaim certain features within the statement can undermine its clarity and effectiveness. When a statement fails to serve its intended function, the examiner may issue a notice requesting clarification or amendments to ensure the design can be properly assessed.

Amending the Statement

Applicants can amend their statement of newness and distinctiveness only before registration (under section 28 of the Designs Act 2003). Once the design is registered, amendments are not possible.

This restriction exists because post-registration amendments must not alter the scope of the registered design. Since the statement goes directly to scope, it cannot be changed after registration. In fact, the Register only records whether a statement was included, it does not publish the actual text of the statement.

Using the Statement to Assess Distinctiveness

Section 19(2)(b) of the Designs Act requires examiners to give particular consideration to features mentioned in the statement. This means that if the statement highlights only a part of the design, the examiner will focus on that part, though always in the context of the whole design. That said, if the statement identifies features across the whole product, the scope of the design becomes narrower. For example, if the statement claims that distinctiveness lies in a product being a particular colour, then the registration will effectively be limited to that colour.

Also, the statement cannot turn an insignificant feature into a prominent one. The key test remains whether the overall impression on the informed user is different.

Illustrative Examples

Example 1 (Design 202016569): The statement identified shape, colour, and configuration of a doorknob. Distinctiveness was assessed by focusing on these aspects as shown in the representations.

Example 2 (Design 201914459): The statement referred to the colour combination of a wheel and lock. The scope was limited to that combination as depicted.

Ambit Statements

Some applicants try to use sweeping language, such as claiming distinctiveness in “each feature of the design considered separately or in combination with any other feature.” These ambit statements are problematic because they don’t identify any specific visual feature.

In Reckitt Benckiser Inc [2008] ADO 1, it was interpreted that such a statement as essentially referring to all features of the design as shown in the representations. This means the statement adds nothing to the application. While this interpretation prevents automatic revocation, it also shows the limited usefulness of vague statements.

Why work with a professional on your statement of newness and distinctiveness?

Drafting a Statement of Newness and Distinctiveness isn’t just about filling in a box, it’s about making a legal statement that can affect your design’s enforceability for up to 10 years.

A poorly framed Statement of Newness and Distinctiveness can-

• Narrow your rights too much.
• Fail to protect the features that matter.
• Give competitors a loophole.

We help applicants-

• Identify the key features that truly set their design apart.
• Draft clear, defensible wording.
• Ensure the Statement of Newness and Distinctiveness aligns perfectly with the visual representations.
• Avoid the traps that have led to failed cases in the past.

The Statement of Newness and Distinctiveness is optional, but in many cases, it’s a powerful way to define the heart of your design. Handled well, it can sharpen your registration, guide examiners toward the features that matter most, and give you a stronger position if your design is challenged. Handled poorly, it can leave you with weaker protection or no protection at all.

If you’re serious about safeguarding your product’s look, get professional guidance before you file, because once your Statement of Newness and Distinctiveness is registered, it’s with you for the life of the design. Contact us now for a free consultation.