Four design decisions involving Apple’s Vision Pro headsets were issued recently from IP Australia: Apple Inc. [2026] ADO 1, [2026] ADO 2, [2026] ADO 3 and [2026] ADO 4 (“the Apple decisions”).
The decisions involved several registered designs that were initially rejected by the respective Examiners and subsequently appealed by Apple. The decisions provide some useful reminders about Australian design law—and, importantly, about how a design portfolio should be built in the first place.
New is not necessarily distinctive
Section 15(1) of the Designs Act 2003 (Cth) provides that a design is registrable if it is new and distinctive when compared with the prior art base.
It is important to remember that newness and distinctiveness are separate requirements. A design may be new, but still fail the distinctiveness requirement because it is too visually similar to a design that has already been publicly disclosed.
Newness was not the issue in these matters. The question was whether the designs were distinctive over earlier publicly disclosed designs relating to similar products, including designs originating from Apple itself. An example is shown below:
This raises a question we regularly discuss with clients: How many designs should one file? More is not necessarily better. For example, if one files a large number of designs that are visually very close to one another, it may inadvertently create a body of prior art that makes it more difficult to establish distinctiveness for later design filings.
In other words, a large design portfolio is not necessarily a strong design portfolio. Sometimes, fewer designs that are more visually differentiated can provide better strategic protection than a large number of closely related designs. Consultation with an appropriately qualified attorney who has handled large design portfolios is highly recommended.
The importance of a Statement of Newness and Distinctiveness
Section 19 of the Designs Act 2003 (Cth) is particularly important in assessing whether two designs are substantially similar in overall impression. Section 19(1) directs the decision-maker to give more weight to similarities between the designs than to differences. Section 19(2) then identifies factors to be considered when assessing substantial similarity in overall impression. Importantly, section 19(2)(b)(i) provides that, where the application includes a Statement of Newness and Distinctiveness (SoND) identifying particular visual features as new and distinctive, the decision-maker must have particular regard to those features.
This is where the Apple decisions provide a particularly useful lesson. All but one of Apple’s registered designs considered in the Apple decisions did not include a SoND. That meant that the Delegate was required to have regard to the appearance of the design as a whole, rather than being directed to particular features identified by Apple as new and distinctive.
A SoND can provide an applicant with an opportunity to identify the visual features that are commercially important and on which the applicant says the distinctiveness of the design resides. Without one, the applicant may be leaving the decision-maker to determine what catches the eye, and that can be a risky strategy. The absence of a SoND was a significant consideration in the Delegate’s reasoning across the Apple decisions.
A carefully drafted SoND can help focus attention on the specific visual features that matter most to the applicant. That can be particularly valuable where a design contains a number of features that are common in the relevant industry. It is, in effect, an opportunity to say: “This is what we want you to look at.”
A SoND also assists in blocking competitors from making slight variations and arguing that their design is different. In litigation, a SoND can assist by clearly directing the Court as to what are the essential features.
However, a SoND is not a magic wand. It does not make an otherwise non-distinctive design distinctive, and it does not allow an applicant to disregard the overall appearance of the design, as the statutory test still has to be satisfied.
Shape can trump texture and tone
In one of the Apple decisions, it was argued that features including the knit texture, different surface tones and textures, and the contrast between those tones and textures contributed to the overall appearance of the design. However, the Delegate did not accept that these features provided sufficient differentiation from the prior art (see image below).
The shape of the product was considered to be the feature that was visually arresting, while the tonal and textural differences were considered to have limited visual impact and were not sufficient to create a significant departure from the prior art.
This is another useful reminder for applicants that it is not enough to identify differences between two designs. The question is whether those differences are sufficiently significant to change the overall impression of the design. A difference may exist without being distinctive.
Design strategy starts before the application is filed
Applicants (and their attorneys) should consider:
- Which designs should we protect?
- How many applications should we file?
- Which visual features are commercially important?
- What should the SoND say?
- Will today’s filings become tomorrow’s prior art?
- Are we filing multiple designs that are unnecessarily close to each other?
- Are we clearly identifying the features that distinguish our design from existing designs?
- Could our filing strategy make subsequent designs harder to protect?
The objective should not simply be to build a large design portfolio. It should be to build a strategic one. The Apple decisions are a timely reminder that, when it comes to designs, what you file today can affect what you are able to protect tomorrow.
Authors
Written by Edward Genocchio and Edward Quinn
