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Designs Bill 2003

Part 4 Registrable designs: Validity

Division 1 Registrable designs

15   Registrable designs

             (1)  A design is 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.

             (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 section 60 is on or after the priority date of the designated design.

Note:          For document , see section 25 of the Acts Interpretation Act 1901 .

16   Designs that are identical or substantially similar in overall impression

             (1)  A design is new unless it is identical to a design that forms part of the prior art base for the design.

             (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 (see section 19).

             (3)  Subject to paragraph 15(2)(c), 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.

17   Certain things to be disregarded in deciding whether a design is new and distinctive

             (1)  For the purpose of deciding whether a design is new and distinctive, the person making the decision must disregard:

                     (a)  any publication or use of the design, with the consent of the registered owner of the design, or the registered owner’s predecessor in title, in circumstances prescribed by the regulations; and

                     (b)  any publication or use of the design, without the consent of the registered owner of the design, by another person who derived or obtained the design from the registered owner of the design, or from the registered owner’s predecessor in title;

but only if a design application in respect of the design is made within the prescribed period.

             (2)  For the purpose of deciding whether a design is new and distinctive, the person making the decision must disregard:

                     (a)  any information given by, or with the consent of, the registered owner of the design, or the registered owner’s predecessor in title, to any of the following, but to no other person or organisation:

                              (i)  the Commonwealth, a State or a Territory;

                             (ii)  a person authorised by the Commonwealth, a State or a Territory to investigate the design; and

                     (b)  anything done for the purpose of an investigation mentioned in subparagraph (a)(ii).

18   Certain designs not to be treated as other than new and distinctive

             (1)  This section applies if:

                     (a)  copyright under the Copyright Act 1968 subsists in an artistic work; and

                     (b)  an application is made by, or with the consent of, the owner of that copyright for registration of a corresponding design.

             (2)  The design is not to be treated, for the purposes of this Act, as being other than new and distinctive, or as having been published, by reason only of any use previously made of the 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.

             (3)  In this section:

applied industrially has the meaning given by regulations under section 77 of the Copyright Act 1968 .



 

Division 2 Substantial similarity in overall impression

19   Factors to be considered in assessing substantial similarity in overall impression

             (1)  If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.

             (2)  The person must also:

                     (a)  have regard to the state of development of the prior art base for the design; and

                     (b)  if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness ) identifying particular visual features of the design as new and distinctive:

                              (i)  have particular regard to those features; and

                             (ii)  if those features relate to only part of the design—have particular regard to that part of the design, but in the context of the design as a whole; and

                     (c)  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

                     (d)  have regard to the freedom of the creator of the design to innovate.

             (3)  If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.

             (4)  In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user ).

             (5)  In this section, a reference to a person includes a reference to a court.



 

Chapter 3 Design applications