Design developments: Ferrari secures new Spider design registration, and proposed changes to Australian Designs legislation

What you need to know

• In a recent hearing, Ferrari successfully overturned an examination decision to revoke registration of its new 488 Pista Spider vehicle design.
• IP Australia has released draft legislation that aims to streamline the application process and provide additional protection to applicants in case of inadvertent publication.

What you need to do

• Know that you can file new design applications even when you have a prior similar design.
• Designs that initially appear similar to the prior art can still be distinctive, especially where safety or performance requirements inhibit the freedom of a designer to innovate.
• In the Ferrari decision, the Hearing Officer was persuaded by the evidence of a skilled and informed user, who can have very specialised expertise but need not use the product.  A declaration filed by such a person with specialised knowledge can be useful in overcoming objections.

Ferrari overcomes design revocation

Ferrari was originally refused protection for the design of its new 488 Pista Spider on the grounds that the design was not distinctive from Ferrari's own previous design for the original 488 Spider vehicle and two other similar designs all relating to that same vehicle.  Upon examination, the Examiner revoked the design stating that, "more weight is to be given to the similarities between the designs than to the differences, and that the Pista Spider was merely, "a refinement of the existing design."

The Pista Spider above, compared with the existing 488 design

Ferrari subsequently sought a hearing regarding the revocation, and submitted that the Pista design was new and distinctive over its previous 488 model due to prominent differences in visual features such as the side air vents, bonnet, front bumper, fenders and the general body contour of the respective designs.

Australian designs are assessed through the eyes of an "informed user"; a theoretical person who would undertake a studied comparison of the overall impressions conveyed by the design.  Ferrari filed evidence from the director of a supercar rental business, as an informed user, who stated that he observed numerous visual differences between the 488 Spider and the 488 Pista Spider designs.  The Hearing Officer agreed, observing that there were differences in the front bumper, air scoop, and rear diffusers in the Pista Design that were not present in the 488.  The differences in the design would be apparent to an informed user, such as a sports car enthusiast or collector.  The Hearing Officer also observed that the informed user did not have to actually use the product but simply be familiar with the product.

The Hearing Officer also observed that inherent features, such as the performance and safety requirements of a motor vehicle could inhibit the freedom of a designer to innovate.  These inhibitions limit the ability to redesign certain aspects of a supercar's design such as its windshield, side mirrors and doors.  An informed user is unlikely to conclude that a design lacks distinctiveness simply because it shares visual similarities with a previous vehicle design.

This decision shows the value of presenting evidence from an informed user in overcoming design citations. Certain designs, such as motor vehicles, can often be evolutionary in nature as marques deliberately seek to evoke the heritage of successful previous models.  Such evolutionary design is not a barrier to registration per se, but it may be necessary to provide expert evidence in support of applications to demonstrate that a new design advances the prior art.

New Designs Legislation

As reported in our June 2020 edition IP @ Ashurst here, IP Australia released its proposal for implementing some of the recommendations of the Advisory Council on Intellectual Property (ACIP) with a view to improving the designs regime in Australia.  IP Australia turned those recommendations into draft legislation and sought public comment on a draft Bill and Regulations.

The changes proposed include: