Commonwealth: Designs Act 2003 (Cth)

Designs Act 2003 No. 147, 2003 Compilation No. 25 Compilation date: 14 October 2024 Includes amendments: Act No. 39, 2024 About this compilation This compilation This is a compilation of the Designs Act 2003 that shows the text of the law as amended and in force on 14 October 2024 (the compilation date). The notes at the end of this compilation (the endnotes) include information about amending laws and the amendment history of provisions of the compiled law. Uncommenced amendments The effect of uncommenced amendments is not shown in the text of the compiled law. Any uncommenced amendments affecting the law are accessible on the Register (www.legislation.gov.au). The details of amendments made up to, but not commenced at, the compilation date are underlined in the endnotes. For more information on any uncommenced amendments, see the Register for the compiled law. Application, saving and transitional provisions for provisions and amendments If the operation of a provision or amendment of the compiled law is affected by an application, saving or transitional provision that is not included in this compilation, details are included in the endnotes. Editorial changes For more information about any editorial changes made in this compilation, see the endnotes. Modifications If the compiled law is modified by another law, the compiled law operates as modified but the modification does not amend the text of the law. Accordingly, this compilation does not show the text of the compiled law as modified. For more information on any modifications, see the Register for the compiled law. Self‑repealing provisions If a provision of the compiled law has been repealed in accordance with a provision of the law, details are included in the endnotes. Contents Chapter 1—Introductory Part 1—Preliminary 1 Short title 2 Commencement 3 Crown to be bound 4 Application of the Act Part 2—Interpretation 5 Definitions 5A Meaning of Convention country 5B Definition of exclusive licensee 6 Definition of product 7 Definition of visual feature 8 References in this Act to a design Chapter 2—Design rights, ownership and registrable designs Part 1—Simplified outline of Chapter 2 9 Simplified outline Part 2—Design rights 10 Exclusive rights of registered owners 11 Assignment of interest in a design 12 Power of registered owner to deal with registered design Part 3—Ownership of designs 13 Who is entitled to be registered as the registered owner of a design 14 Ownership of registered designs Part 4—Registrable designs: Validity Division 1—Registrable designs 15 Registrable designs 16 Designs that are identical or substantially similar in overall impression 17 Certain things to be disregarded in deciding whether a design is new and distinctive 18 Certain designs not to be treated as other than new and distinctive Division 2—Substantial similarity in overall impression 19 Factors to be considered in assessing substantial similarity in overall impression Chapter 3—Design applications Part 1—Simplified outline of Chapter 3 20 Simplified outline Part 2—Design applications Division 1—Applications 21 Person may file a design application 22 A design application may be in respect of more than one design 23 Design applications covering excluded designs Division 2—How Registrar must deal with a design application 24 Design applications that meet the minimum filing requirements 25 Publication of receipt of application Division 3—Filing date and priority date 26 Filing date 27 Priority date Part 3—Amendment or withdrawal of design applications 28 Amendment of design applications 29 Disputes between applicants 30 Persons may ask for design application to proceed in the person's name 31 Publication of certain details of amended application 32 Withdrawal of designs and design applications Part 4—Lapsing of design applications 33 Lapsing of design applications Chapter 4—Registration of designs Part 1—Simplified outline of Chapter 4 34 Simplified outline Part 2—Requests for registration 35 Request for registration 36 Request in respect of designs excluded from an application in respect of more than one design Part 3—Registration Division 1—Formalities check 39 Formalities check—applications in respect of one design only 40 Formalities check—applications in respect of more than one design 41 Registrar must give applicants an opportunity to correct deficiencies 42 What happens after Registrar's notification under section 41 43 Registrar must refuse to register certain designs 44 Registrar must register certain designs after refusal Division 2—Registration procedures 45 Registrar must notify applicant of registration and give public notice Division 3—Term of registration 46 Term of registration 47 Renewal of registration 48 Ceasing of registration 49 Surrender of registration 50 Revocation of registration on surrender Division 4—Revocation on grounds relating to entitled persons 51 Revocation of registration on grounds relating to entitled persons 52 Procedures in relation to application 53 Applications by persons declared to be entitled persons in court proceedings 54 Applications by entitled persons after revocation following surrender of registration 55 Priority date of design if an application filed by a person declared to be an entitled person 56 Meaning of original registered owner Part 5—Certain documents to be available for public inspection 60 Design applications for registered designs and associated documents to be open for public inspection 61 Certain documents not to be published Chapter 5—Examination of designs Part 1—Simplified outline of Chapter 5 62 Simplified outline Part 2—Requests for examination 63 Examination of design 64 Requirements for request for examination of design Part 3—Examination 65 What Registrar must do in examining a design 66 Amendment of registration 67 Certificate of examination where registration valid 68 Revocation of registration after examination Part 4—Material may be provided to Registrar 69 Certain material may be provided to Registrar Chapter 6—Infringement Part 1—Simplified outline of Chapter 6 70 Simplified outline Part 2—Infringement of registered design 71 Infringement of design 71A Infringement exemption—prior use 72 Infringement exemption—repairs 73 Infringement proceedings 74 Counter‑claims 75 Remedies for infringement 76 Intervention by Registrar Part 3—Relief from unjustified threats 77 Application for relief from unjustified threats 78 Court's power to grant relief 79 Counter‑claim 80 Mere notification of registration not a threat 81 Legal practitioners, registered patent attorneys and registered trade marks attorneys Chapter 7—Jurisdiction and powers of courts Part 1—Simplified outline of Chapter 7 82 Simplified outline Part 2—Jurisdiction 83 Jurisdiction of Federal Court 83A Jurisdiction of the Federal Circuit and Family Court of Australia (Division 2) 84 Jurisdiction of other prescribed courts 85 Exercise of jurisdiction 86 Transfer of proceedings etc. 87 Appeals 88 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal 89 Registrar may appear in appeals Part 3—Compulsory licences and revocation of registration 90 Person may apply to court for compulsory licence 91 Terms of compulsory licence 92 Revocation of registration after grant of compulsory licence Part 4—Revocation of registration by court in other circumstances 93 Revocation of registration in other circumstances Chapter 8—The Crown Part 1—Simplified outline of Chapter 8 94 Simplified outline Part 2—Use by the Crown 95 Meaning of terms 96 Crown use of designs—general rule 96A Crown use of designs—emergencies 97 Applicants, entitled persons and registered owners to be informed of use 98 Crown use of designs—terms (including remuneration) 99 Certain agreement and licences inoperative unless approved by relevant Minister 102 Crown use of designs—court order to cease 103 Sale of products 104 Forfeited products 105 Supply of products by the Commonwealth to foreign countries Part 3—Acquisition by and assignments to the Crown 106 Acquisition of design by the Commonwealth 107 Assignment of design to the Commonwealth Part 4—Prohibition orders 108 Prohibition of publication of information about designs 109 Publication of information about designs Chapter 9—The Register 110 Simplified outline 111 Registrar must keep Register 112 Register may be kept by computer 113 Inspection of Register 114 Amendments of Register to record changes of ownership 115 Amendments of Register made to give effect to certain decisions 116 Reissue of certificates 117 Trusts not to be entered in Register 118 Evidentiary provision 119 Admissibility of unregistered interests 120 Rectification of Register Chapter 10—Administration 121 Simplified outline 122 Registrar 123 Deputy Registrars 124 Delegation by Registrar 125 Designs Office 126 Seal of Designs Office 127 Registrar's Powers 128 Recovery of costs Chapter 11—Miscellaneous Part 1—Simplified outline of Chapter 11 129 Simplified outline Part 2—Fees 130 Fees 130A Approved means of paying a fee Part 3—Offences 131 False entries in Register 132 False representation that a design is registered 133 False representations about the Designs Office 134 Failure to comply with requirements of Registrar 135 Officers not to traffic etc. in designs Part 3A—Computerised decision‑making 135A Computerised decision‑making Part 4—Review of the Registrar's decisions 136 Review by Administrative Review Tribunal Part 4A—Doing act after end of period otherwise provided for doing it 136A Doing act when Designs Office reopens after end of period otherwise provided for doing act Part 5—Extensions of time 137 Extensions of time 138 Consequences of extension 139 Protection of third parties 140 Infringement proceedings Part 6—Other 141 Powers of agents 142 Right of lien of registered patent attorney and registered trade marks attorney 143 Revocation of registration does not affect court decisions and things done under contracts before revocation 144 Filing of documents 144A Approved means of filing documents 144B Directions by Registrar for filing of documents 144C Directions by Registrar for filing of evidence 144D Notifications by Registrar under this Act or regulations 145 Service of documents 146 Death of applicant before application determined 147 Death of person after design registered 148 Exercise of discretionary power by Registrar 149 Regulations 149A Instrument determining formal requirements for design applications etc. Chapter 12—Repeal, transitional and saving provisions Part 1—Repeal of Designs Act 1906 150 Repeal Part 2—Transitional and saving provisions 151 Application of this Act to certain designs 152 Term of registration of certain designs 153 Applications made before commencing day 154 Other applications and proceedings 155 Pending proceedings 156 Infringement under old Act 157 Registrar and Deputy Registrar 158 The Register 159 Conversion of transitional applications 160 Effect of a converted application 160A Approvals under subsection 40A(6) of old Act 161 Definitions Endnotes Endnote 1—About the endnotes Endnote 2—Abbreviation key Endnote 3—Legislation history Endnote 4—Amendment history An Act relating to designs, and for related purposes Chapter 1—Introductory Part 1—Preliminary 1 Short title This Act may be cited as the Designs Act 2003. 2 Commencement (1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, on the day or at the time specified in column 2 of the table. Commencement information Column 1 Column 2 Column 3 Provision(s) Commencement Date/Details 1. Sections 1 and 2 and anything in this Act not elsewhere covered by this table The day on which this Act receives the Royal Assent 17 December 2003 2. Sections 3 to 161 A single day to be fixed by Proclamation, subject to subsection (3) 17 June 2004 Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent. (2) Column 3 of the table is for additional information that is not part of this Act. This information may be included in any published version of this Act. (3) If a provision covered by item 2 of the table does not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, it commences on the first day after the end of that period. 3 Crown to be bound (1) This Act binds the Crown in right of the Commonwealth, of each of the States, of the Australian Capital Territory and of the Northern Territory. (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 4 Application of the Act This Act extends to: (a) each external Territory; and (b) the continental shelf; and (c) the waters above the continental shelf; and (d) the airspace above Australia, each external Territory and the continental shelf. Part 2—Interpretation 5 Definitions In this Act, unless the contrary intention appears: Agency has the same meaning as in the Public Service Act 1999. artistic work has the same meaning as in the Copyright Act 1968. Australia includes each external Territory. authority, in relation to the Commonwealth, a State or a Territory, means a body established for a public purpose by or under a law of the Commonwealth, State or Territory. certificate of examination means a certificate of examination of a registered design issued under Chapter 5. Commonwealth includes a Commonwealth authority. complex product means a product comprising at least 2 replaceable component parts permitting disassembly and re‑assembly of the product. continental shelf means the continental shelf of Australia as defined in the Seas and Submerged Lands Act 1973. Convention country has the meaning given by section 5A. corresponding design, in relation to an artistic work, has the same meaning as in Division 8 of Part III of the Copyright Act 1968. Deputy Registrar means a Deputy Registrar appointed under section 123. design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product. Note: See also section 8. design application means an application filed under section 21. Designs Office means the Designs Office established by section 125. employee means a person, other than the Registrar or a Deputy Registrar, who: (a) is a person engaged under the Public Service Act 1999 and is employed in the Designs Office; or (b) is not such a person but performs services, in the Designs Office, for or on behalf of the Commonwealth. entitled person, in relation to a design, means a person entitled under section 13 to be entered in the Register as the registered owner of the design. examination, in relation to a design, means examination of the design under section 65. exclusive licensee has the meaning given by section 5B. Federal Court means the Federal Court of Australia. file means file with the Designs Office. Note: Section 144 deals with filing. filing date has the meaning given by section 26. head, in relation to the Designs Office of a Convention country, means the official chief (however described) of that Office. infringement proceedings means an action or proceedings for the infringement of a registered design. initial application has the meaning given by section 23. legal personal representative, in relation to a deceased person, means a person to whom: (a) probate of the will of the deceased person; or (b) letters of administration of the estate of the deceased person; or (c) other like grant; has been granted, whether in Australia or elsewhere. legal practitioner means a barrister or solicitor of the High Court of Australia or of the Supreme Court of a State or Territory. Locarno Agreement means the Agreement establishing an International Classification for Industrial Design, signed at Locarno on 8 October 1968. minimum filing requirements has the meaning given by section 21. PPSA security interest (short for Personal Property Securities Act security interest) means a security interest within the meaning of the Personal Property Securities Act 2009 and to which that Act applies, other than a transitional security interest within the meaning of that Act. Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act: (a) section 8 (interests to which the Act does not apply); (b) section 12 (meaning of security interest); (c) Chapter 9 (transitional provisions). Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. preferred means: (a) in relation to filing a document with the Designs Office—means the means specified under subsection 144A(4); or (b) in relation to paying a fee—means the means specified under subsection 130A(4). prescribed court means the following: (a) the Federal Court of Australia; (aa) the Federal Circuit and Family Court of Australia (Division 2); (b) the Supreme Court of a State; (c) the Supreme Court of the Australian Capital Territory; (d) the Supreme Court of the Northern Territory; (e) the Supreme Court of Norfolk Island. prior art base has the meaning given by section 15. priority date, in relation to a design, means the priority date of the design under section 27. product has the meaning given by section 6. Register means the Register of Designs mentioned in section 111. registered means registered under this Act. registered design, at a particular time, means a design that is registered at that time. registered owner has the meaning given by section 14. registered patent attorney has the same meaning as in the Patents Act 1990. registered trade marks attorney has the same meaning as in the Trade Marks Act 1995. registrable design has the meaning given by section 15. Registrar means the Registrar of Designs holding office under this Act. relevant authority means: (a) in relation to the use of a design by or for the Commonwealth—the Commonwealth; or (b) in relation to the use of a design by or for a State—that State; or (c) in relation to the use of a design by or for a Territory—that Territory. relevant Minister has the meaning given by subsection 96(5). relevant parties, in relation to the examination of a design under Chapter 5, means: (a) the registered owner of the design; and (b) the person who requested the examination; and (c) each person who is entered on the Register as having an interest in the design. relevant proceedings, in relation to a registered design, means court proceedings: (a) for infringement of the registered design; or (b) for revocation of the registration of the design; or (c) in which the validity of the registration of the design is in dispute. representation means a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen. services of a relevant authority has a meaning affected by subsection 95(5). State includes a State authority. term of registration has the meaning given by section 46. Territory includes a Territory authority. used for Crown purposes has the meaning given by subsection 95(2). visual feature has the meaning given by section 7. 5A Meaning of Convention country (1) In this Act: Convention country means a foreign country or region of a kind prescribed by the regulations. (2) Despite subsection 14(2) of the Legislation Act 2003, regulations made for the purposes of this section may make provision in relation to a matter by applying, adopting or incorporating, with or without modification, any matter contained in any other instrument or other writing as in force or existing from time to time. 5B Definition of exclusive licensee (1) For the purposes of this Act, an exclusive licensee is a licensee under a licence granted by the registered owner of a registered design that confers on the licensee, or on the licensee and persons authorised by the licensee, the exclusive rights in the design mentioned in paragraphs 10(1)(a) to (e) to the exclusion of the registered owner and all other persons. (2) Subsection (1) applies whether or not the licence also confers on the licensee the exclusive right in the design mentioned in paragraph 10(1)(f) to the exclusion of the registered owner and all other persons. 6 Definition of product (1) For the purposes of this Act, a thing that is manufactured or hand made is a product (but see subsections (2), (3) and (4)). (2) A component part of a complex product may be a product for the purposes of this Act, if it is made separately from the product. (3) A thing that has one or more indefinite dimensions is only a product for the purposes of this Act if any one or more of the following applies to the thing: (a) a cross‑section taken across any indefinite dimension is fixed or varies according to a regular pattern; (b) all the dimensions remain in proportion; (c) the cross‑sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios; (d) it has a pattern or ornamentation that repeats itself. (4) A kit which, when assembled, is a particular product is taken to be that product. 7 Definition of visual feature (1) In this Act: visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product. (2) A visual feature may, but need not, serve a functional purpose. (3) The following are not visual features of a product: (a) the feel of the product; (b) the materials used in the product; (c) in the case of a product that has one or more indefinite dimensions: (i) the indefinite dimension; and (ii) if the product also has a pattern that repeats itself—more than one repeat of the pattern. 8 References in this Act to a design In this Act, a reference to a design is a reference to a design in relation to a product. Chapter 2—Design rights, ownership and registrable designs Part 1—Simplified outline of Chapter 2 9 Simplified outline The following is a simplified outline of this Chapter: This Chapter sets out matters relating to design rights. Part 2 specifies the exclusive rights of the registered owners of a registered design. Part 3 specifies: (a) who is entitled to be registered as the owner of an unregistered design; and (b) who is the registered owner of a registered design. Part 4 defines the key concepts of registrable design, newness, distinctiveness and substantial similarity. These concepts are important because: (a) in examining a design under Chapter 5, the Registrar must decide whether it is new and distinctive when compared to the prior art base; and (b) in deciding whether a person has infringed a registered design under Chapter 6, a court must consider whether the allegedly infringing design is substantially similar in overall impression to the registered design. Part 2—Design rights 10 Exclusive rights of registered owners (1) The registered owner of a registered design has the exclusive right, during the term of registration of the design: (a) to make or offer to make a product, in relation to which the design is registered, which embodies the design; and (b) to import such a product into Australia for sale, or for use for the purposes of any trade or business; and (c) to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product; and (d) to use such a product in any way for the purposes of any trade or business; and (e) to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d); and (f) to authorise another person to do any of the things mentioned in paragraph (a), (b), (c), (d) or (e). (2) The exclusive rights mentioned in subsection (1) are personal property and are capable of assignment and of devolution by will or by operation of law. (3) This section is subject to this Act. 11 Assignment of interest in a design (1) The registered owner of a registered design may assign all or part of the registered owner's interest in the design by writing. (2) An assignment under subsection (1) must be signed by, or on behalf of, the assignor and the assignee. (3) An assignment under subsection (1) may be for a particular place. Note: Section 114 deals with amendments to the Register to record the assignment of an interest in a design. 12 Power of registered owner to deal with registered design (1) The registered owner of a registered design may, subject to any rights appearing in the Register to be vested in another person, deal with the registered owner's interest in the design as absolute owner of it, and give good discharges for any consideration for such dealing. (2) However, subsection (1) does not protect a person who deals with the registered owner of a registered design otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the registered owner. (2A) Despite subsection (1), the recording in the Register of a right that is a PPSA security interest does not affect a dealing with an interest in a registered design. (3) Equities in relation to a registered design may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value. (4) Subsection (3) does not apply in relation to an equity that is a PPSA security interest. Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as designs) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act: (a) Part 2.5 (taking personal property free of security interests); (b) Part 2.6 (priority between security interests); (c) Chapter 4 (enforcement of security interests). Part 3—Ownership of designs 13 Who is entitled to be registered as the registered owner of a design (1) A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered: (a) the person who created the design (the designer); (b) if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary; (c) a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law; (d) a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person; (e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d). (2) Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if: (a) the person has assigned all of the person's rights in the design to another person; or (b) the person's rights in the design have devolved on another person by operation of law. (3) To avoid doubt: (a) more than one person may be entitled to be entered on the Register as the registered owner of a design; and (b) unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design. (4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered. 14 Ownership of registered designs (1) The registered owner of a registered design at a particular time is: (a) the person who, at that time, is entered in the Register as the registered owner of the design; or (b) if, at that time, there are 2 or more such persons—each of them. (2) If there are 2 or more registered owners of a registered design: (a) each of them is entitled to an equal, undivided share in the exclusive rights in that design; and (b) subject to paragraph (c), each registered owner is entitled to exercise the exclusive rights in the design to the registered owner's own benefit without accounting to the others; and (c) none of them can grant a licence to exercise the exclusive rights in the design, or assign an interest in the design, without the consent of the others. (3) If a product that embodies a registered design is sold by any of 2 or more registered owners of the design, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the registered owners. (4) Subsection (2) is subject to any contrary agreement between the registered owners of a registered design. 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 2B 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 (the subject design) is new and distinctive, the person making the decision must disregard any of the following publications or uses that occur in the period of 12 months ending at the end of the day before the priority date in relation to the subject design: (a) a publication or use of a design (which may or may not be the subject design) by a relevant entity; (b) a publication or use of a design (which may or may not be the subject design) by another person or body that derived or obtained the design from a relevant entity. Note: For relevant entity, see subsection (1D). (1A) Subsection (1) applies in relation to a publication or use that occurs on or after the commencement of Schedule 1 to the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (whether the 12‑month period referred to in that subsection begins before, on or after that commencement). (1B) Paragraph (1)(b) does not apply to the following publications: (a) a publication by the Registrar under this Act; (b) a publication by a person or body in a foreign country if: (i) the person or body has functions similar to the Registrar's functions; and (ii) the publication is under a law of that foreign country relating to designs; (c) a publication by an agency or organisation that is established under, or in accordance with, an international agreement if: (i) the agency or organisation has functions including publishing designs to the public; and (ii) the publication is in accordance with an international agreement relating to designs or with a law relating to designs. (1C) For the purposes of paragraph (1)(b), if: (a) the registered owner of the subject design establishes that: (i) a relevant entity; or (ii) another entity in accordance with an authorisation from a relevant entity; published or publicly used a design (the first design and which may or may not be the subject design) before a particular publication or use of a design (the other design) by another person or body; and (b) the other design is identical to, or substantially similar in overall impression to, the first design; then it must be presumed that the other person or body derived or obtained the other design from the relevant entity, unless it is established that the other person or body created the other design without reference to, or knowledge of, the first design. (1D) For the purposes of this section, a relevant entity is: (a) the registered owner of the subject design; or (b) any predecessor in title of the registered owner; or (c) the person who created the subject design if that person is not covered by paragraph (a) or (b). (1E) If a use of a design is to be disregarded because of subsection (1), then that use must also be disregarded for the purposes of section 18. (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. Note: Certain uses of the design are disregarded: see subsection 17(1E). (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 (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates). (5) In this section, a reference to a person includes a reference to a court. Chapter 3—Design applications Part 1—Simplified outline of Chapter 3 20 Simplified outline The following is a simplified outline of this Chapter: This Chapter sets out the rules relating to design applications. Part 2 provides that a person may file a design application in relation to one or more designs. If the design application meets the minimum filing requirements, the design application is allocated a filing date, and each design disclosed in it obtains a priority date. Under Chapter 4, a person who has filed a design application may, within the prescribed period, request registration of all or any of the designs disclosed in the application. Part 3 deals with amendment and withdrawal of design applications. Part 4 deals with the lapsing of design applications. Part 2—Design applications Division 1—Applications 21 Person may file a design application (1) A person may file an application (a design application) in respect of a design. (2) A design application must comply with: (a) any requirements prescribed by the regulations in relation to representations of designs disclosed in the application; and (b) any other requirements prescribed by the regulations. These are the minimum filing requirements. (3) A design application may be made by more than one person. (4) A design application must specify the entitled person or persons in relation to the designs disclosed in the design application. 22 A design application may be in respect of more than one design (1) A single design application may be in respect of: (a) one design in relation to one product; or (b) one design that is a common design in relation to more than one product; or (c) more than one design in relation to one product; or (d) more than one design in relation to more than one product, if each product belongs to the same Locarno Agreement class. (2) If more than one design is disclosed in a design application, the entitled person or persons must be the same in relation to each design. Note: This means that a separate application must be made in respect of designs with a different entitled person or persons. (3) To avoid doubt, a design that is a common design in relation to more than one product is a design in relation to each product. 23 Design applications covering excluded designs (1) If: (a) one or more designs are disclosed in a design application (the initial application); and (b) after the initial application is filed, it is amended under section 28 to exclude one or more of those designs (the excluded designs); and (c) the initial application has not lapsed or been withdrawn; and (d) none of the designs in the initial application has been registered; the applicant may file a design application under section 21 in respect of one or more of the excluded designs. (2) An application in respect of one or more excluded designs must be filed within the period prescribed by the regulations. (3) To avoid doubt, an application in respect of one or more excluded designs must not include a design that has been withdrawn under subsection 32(2) from the initial application or refused registration. Division 2—How Registrar must deal with a design application 24 Design applications that meet the minimum filing requirements (1) If a design application meets the minimum filing requirements mentioned in subsection 21(2), the Registrar must, by notification to the applicant, state: (a) that the design application meets the minimum filing requirements; and (b) the filing date of the application; and (c) if the design application was not accompanied by a request for registration of each design disclosed in the application—that such a request may be made under section 35 and state the effect of subsections 35(4) and (5). (2) If a purported design application does not meet the minimum filing requirements, the Registrar must notify the applicant to that effect. The notification must: (a) identify each minimum filing requirement that has not been met; and (b) require the applicant to file the additional information required within 2 months, or such other period as is prescribed, from the date of the notification. (3) If the minimum filing requirements are not met within the period under paragraph (2)(b), the application is taken never to have been filed. 25 Publication of receipt of application The Registrar must publish, in the manner prescribed by the regulations, the details prescribed by the regulations in relation to each design application that meets the minimum filing requirements. Division 3—Filing date and priority date 26 Filing date A design application has the filing date determined in accordance with the regulations. 27 Priority date (1) The priority date of a design disclosed in a design application that meets the minimum filing requirements is: (a) the filing date of the design application; or (b) if, before the design application was filed, an application for protection in respect of the design had been made in a Convention country in accordance with the regulations—the date prescribed by the regulations; or (c) if the regulations provide for a different date as the priority date—the date prescribed by the regulations. (2) If more than one design is disclosed in a design application, the designs may have different priority dates. Part 3—Amendment or withdrawal of design applications 28 Amendment of design applications (1) The Registrar may amend a design application if requested to do so by the applicant. (2) A request under subsection (1) must be made in the manner prescribed by the regulations. (3) Despite subsection (1), the Registrar must not amend: (a) any representations included in the design application; or (b) any other documents accompanying the design application; in so far as they define a design disclosed in the design application, in such a way as to alter the scope of the application by the inclusion of matter which was not in substance disclosed in the original design application, representations or other documents. (4) In this section: amend, in relation to a representation of a design disclosed in a design application, includes the substitution of one representation for another representation. (5) An appeal lies to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) against a decision of the Registrar under this section. 29 Disputes between applicants (1) This section applies if a dispute arises between 2 or more persons in relation to whether, or in what manner, a design application should proceed. (2) The Registrar may, on a request made in accordance with the regulations by any of the persons, make any determinations the Registrar thinks fit for either or both of the following purposes: (a) enabling the application to specify which of those persons is an entitled person in relation to a design disclosed in the application; (b) regulating the manner in which the application is to proceed. (3) A person mentioned in subsection (1) or (2) must be: (a) the applicant; or (b) a person who asserts that the person is an entitled person in relation to a design disclosed in the application. 30 Persons may ask for design application to proceed in the person's name (1) A person may ask the Registrar to direct that a design application specify the person as: (a) an applicant; or (b) an entitled person in relation to a design disclosed in the application. (2) The Registrar may give the direction if the person would, if the design were registered, be entitled under an assignment or agreement, or by operation of law, to: (a) the registered design or an interest in it; or (b) an undivided share in the registered design or in such an interest. (3) If the Registrar gives the direction: (a) the person is taken to be an applicant or an entitled person in relation to the design, as the case requires; and (b) the application is taken to be amended accordingly. (4) A request under subsection (1) must be in accordance with the regulations. 31 Publication of certain details of amended application The Registrar must publish the details prescribed by the regulations in relation to a design application amended by the Registrar under this Part. 32 Withdrawal of designs and design applications (1) A person who has filed a design application may withdraw the application by written notice filed within the period prescribed by the regulations. (2) A person who has filed a design application in respect of more than one design may withdraw one or more of those designs from the application by written notice filed within the period prescribed by the regulations. (3) If the design application was filed by more than one person, the notice is not effective unless each of them consented to the giving of the notice. (4) If a design is withdrawn from a design application, the person or persons who withdrew the design may not subsequently request registration of the design under Part 2 of Chapter 4 unless the person makes another application in respect of the design under section 21. Part 4—Lapsing of design applications 33 Lapsing of design applications (1) A design application lapses if the Registrar has given the applicant a notification under section 41 in respect of the application, and the applicant has not, within the period prescribed by the regulations: (a) requested that the application be amended; or (b) responded in writing to the notification as mentioned in subparagraph 41(c)(ii); in such a way that the Registrar is satisfied that the application meets the applicable requirements of Chapter 4. (2) If the Registrar has, under section 137, extended a period within which a thing mentioned in subsection (1) is to be done, a reference in subsection (1) to a period is a reference to the extended period. (4) The Registrar must publish a notice stating that a design application has lapsed under subsection (1). The notice must satisfy the requirements prescribed by the regulations. Chapter 4—Registration of designs Part 1—Simplified outline of Chapter 4 34 Simplified outline The following is a simplified outline of this Chapter: Part 2 permits an applicant to request registration of all or any of the designs disclosed in a design application. If the applicant does not request registration of a design within a period prescribed by the regulations, the applicant is taken to have made the request. The Registrar must register the designs under Part 3 if specified requirements are satisfied. The Registrar must refuse to register certain designs (see section 43). Registration of a design is for a maximum of 10 years (see Division 3 of Part 3). The registration of a design may be revoked on grounds relating to entitled persons (see Division 4 of Part 3). Registered designs and associated documents are open for public inspection (see Part 5). Part 2—Requests for registration 35 Request for registration Actual requests for registration (1) An applicant may request registration of one or more designs disclosed in a design application. (2) The request must be: (a) included in the design application; or (b) made within the period prescribed by the regulations. (3) The request must be in accordance with any requirements prescribed by the regulations. Deemed requests for registration (4) If: (a) one design is disclosed in a design application; and (b) at the end of the period applicable under paragraph (2)(b): (i) the applicant has not made a request in relation to the design in accordance with subsections (1) to (3); and (ii) the applicant has not withdrawn the application in accordance with section 32; then the applicant is taken to have requested that the design be registered. (5) If: (a) more than one design is disclosed in a design application; and (b) for a design (the subject design) disclosed in the application, at the end of the period applicable under paragraph (2)(b) in relation to the subject design: (i) the applicant has not made a request in relation to the subject design in accordance with subsections (1) to (3); and (ii) the subject design has not been excluded from the application by an amendment under section 28; and (iii) the applicant has not withdrawn the application in accordance with section 32; and (iv) the applicant has not withdrawn the subject design from the application in accordance with section 32; then the applicant is taken to have requested that the subject design be registered. Note: Subsection (5) applies separately in relation to each design that is disclosed in the design application. Relationship with section 36 (6) This section is subject to section 36. 36 Request in respect of designs excluded from an application in respect of more than one design A person who files a design application (the later application) in respect of designs excluded from an initial application is taken, at the time the later application is filed, to have requested registration of all the designs disclosed in the later application. Part 3—Registration Division 1—Formalities check 39 Formalities check—applications in respect of one design only (1) This section applies to a design disclosed in a design application if: (a) the design is the only design disclosed in the application; and (b) the applicant has requested that the design be registered (including a request taken to have been made under subsection 35(4)). (2) The Registrar must register the design if the Registrar is satisfied that: (a) the design application satisfies the formalities check specified in the regulations; and (aa) the design application complies with the formal requirements determined in an instrument under section 149A; and (b) if the design is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product; and (c) the Registrar is not required to refuse to register the design under subsection 43(1). 40 Formalities check—applications in respect of more than one design (1) This section applies if: (a) more than one design is disclosed in a design application; and (b) the applicant has requested registration of one or more of those designs (including a request taken to have been made under subsection 35(5)). (2) The Registrar must register a design requested to be registered if the Registrar is satisfied of the following: (a) that each product to which the design relates belongs to the same Locarno Agreement class; (b) if the design requested to be registered is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product; (c) that the design application satisfies the formalities check specified in the regulations; (ca) that the design application complies with the formal requirements determined in an instrument under section 149A; (d) that the Registrar is not required to refuse to register the design under subsection 43(1). 41 Registrar must give applicants an opportunity to correct deficiencies If the Registrar is not satisfied as mentioned in section 39 or 40 in relation to a design application, the Registrar must notify the applicant: (a) of the matters in relation to which the Registrar is not satisfied; and (b) that the applicant may request that the Registrar amend the application under section 28; and (c) that the application will lapse at the end of the period prescribed by the regulations for the purposes of subsection 33(1) unless, during that period: (i) the application is amended; or (ii) the applicant responds in writing to the notification stating why the applicant considers that the application does not need to be amended; and as a result of the amendment or response, the Registrar is satisfied as mentioned in section 39 or 40, as the case requires. 42 What happens after Registrar's notification under section 41 (1) This section applies if the Registrar has given a notification to an applicant under section 41. (2) If the applicant requests that the Registrar amend the application, the Registrar must consider the request under section 28. (3) If the applicant responds in writing to the notification as mentioned in subparagraph 41(c)(ii), the Registrar must consider the response. (4) If, after considering the request or response, the Registrar is satisfied as mentioned in section 39 or 40 in relation to the design application, the Registrar must register the design or designs disclosed in the application under whichever of those sections applies. (5) If, after considering the request or response, the Registrar is not satisfied as mentioned in section 39 or 40 in relation to the design application, the Registrar may either: (a) refuse to register the design or designs under section 43; or (b) give a further notification to the applicant under section 41. 43 Registrar must refuse to register certain designs (1) The Registrar must refuse to register a design if: (a) the design is a design, or belongs to a class of designs, prescribed by the regulations for the purposes of this paragraph; or (b) the Registrar must not register the design because of section 18 of the Olympic Insignia Protection Act 1987; or (c) the design is in relation to a product that is: (i) an integrated circuit within the meaning of the Circuit Layouts Act 1989; or (ii) part of such an integrated circuit; or (iii) a mask used to make such an integrated circuit; or (d) the design is subject to an order under section 108. (2) Subject to section 42, the Registrar must refuse to register a design disclosed in a design application in respect of which the Registrar has given a notification under section 41, if the applicant has not: (a) amended the application; or (b) responded in writing to the notification stating why the applicant considers that the application does not need to be amended; in such a way that the Registrar is satisfied as mentioned in section 39 or 40 in relation to the design application. (3) The Registrar must notify the applicant of a refusal under subsection (1) or (2) and of the reasons for the refusal. 44 Registrar must register certain designs after refusal Despite paragraph 43(1)(d), if: (a) the Registrar refuses to register a design because the design is subject to an order under section 108; and (b) the order is later revoked; and (c) at the date of the revocation of the order, the design would, but for the operation of section 108, have been registered; the Registrar must register the design within the period prescribed by the regulations. Division 2—Registration procedures 45 Registrar must notify applicant of registration and give public notice (1) This section applies if the Registrar is required to register a design under this Act. (2) The Registrar must enter in the Register the particulars mentioned in section 111, to the extent that they are applicable. (3) The Registrar must issue a certificate of registration to the applicant. The certificate must satisfy the requirements prescribed by the regulations. (4) The Registrar must publish a notice stating that the design has been registered. The notice must satisfy the requirements prescribed by the regulations. Division 3—Term of registration 46 Term of registration (1) The term of registration of a design is: (a) 5 years from the filing date of the design application in which the design was first disclosed; or (b) if the registration of the design is renewed under section 47—10 years from the filing date of the design application in which the design was first disclosed. (2) If a design has been excluded from an initial application (see section 23), the design application in which the design was first disclosed is taken, for the purposes of subsection (1), to be the initial application. 47 Renewal of registration (1) The registered owner of a registered design may apply for renewal of the registration of the design. (2) The application must be made within the prescribed period after the filing date of the design application in which the design was first disclosed. (3) The Registrar must renew the registration of the design if the application satisfies the requirements prescribed by the regulations. (4) To avoid doubt, if: (a) the registered owner of a registered design applies for renewal of the registration of the design; and (b) the application is made within the period prescribed for the purposes of subsection (2) and the application satisfies the requirements prescribed for the purposes of subsection (3); and (c) the Registrar renews the registration of the design; and (d) the renewal occurs after the end of the period mentioned in paragraph 46(1)(a); then the registration of the design does not cease during the period beginning on the day after the end of the period mentioned in paragraph 46(1)(a) and ending on the day the renewal occurs. 48 Ceasing of registration (1) The registration of a design ceases if an examination of the design has been requested and: (a) within the period prescribed for the purposes of paragraph 65(3)(b), the Registrar is not satisfied as mentioned in paragraph 67(1)(a) or 68(1)(a); or (b) the registered owner of the design has not paid the prescribed fee for the examination by the end of the period prescribed for payment. (2) The registration of a design also ceases at the end of the period mentioned in paragraph 46(1)(a) or (b), as the case requires. (3) If: (a) a registered design was, at the time of registration, a corresponding design in relation to an artistic work in which copyright subsisted under the Copyright Act 1968; and (b) the design would not have been registered under this Act apart from section 18; and (c) the copyright in the artistic work under the Copyright Act 1968 expires before the date on which registration of the design would (apart from this subsection) cease to be in force; the registration of the design ceases at the same time as the expiry of the copyright in the artistic work, and must not be extended after that time. (4) If the registration of a design ceases under subsection (1), any certificate of examination that was in force in respect of the design at the time the registration ceased is taken to be revoked at that time. 49 Surrender of registration (1) The registered owner of a registered design may offer to surrender the registration of the design. (2) If there is more than one registered owner of the design, an offer under subsection (1) must be made by all the registered owners. (3) An offer under subsection (1): (a) may be made at any time; and (b) must be in writing and filed; and (c) must contain the information prescribed by the regulations. 50 Revocation of registration on surrender (1) This section applies if the Registrar receives an offer to surrender the registration of a design under subsection 49(1). (2) The Registrar must: (a) notify the persons prescribed by the regulations of the offer; and (b) give such persons an opportunity to make submissions in the manner, and within the period, prescribed by the regulations. (3) The Registrar may accept the offer, revoke the registration of the design and make an entry in the Register under section 115 after doing the things mentioned in subsection (2). (4) If proceedings in a court have been brought and not completed in relation to the design, the Registrar must not accept the offer to surrender the registration of the design unless: (a) the court consents; or (b) all the parties to the proceedings consent. (5) If a compulsory licence is in force in relation to the design, the Registrar must not accept the offer to surrender the registration of the design. (6) An appeal lies to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) against a decision of the Registrar under this section. Division 4—Revocation on grounds relating to entitled persons 51 Revocation of registration on grounds relating to entitled persons (1) A person may apply to the Registrar for revocation under section 52 of the registration of a design. (2) An application under subsection (1) must: (a) contain the information prescribed by the regulations; and (b) be made in the manner prescribed by the regulations. 52 Procedures in relation to application (1) This section applies if a person makes an application under section 51 for revocation of the registration of a design. (2) If the Registrar is satisfied that: (a) a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or (b) each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time; the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection. (3) If the Registrar makes a declaration under subsection (2), the Registrar must: (a) notify the relevant parties that the registration of the design is revoked; and (b) make an entry in the Register under section 115. (4) The Registrar must also publish a notice that satisfies the requirements prescribed by the regulations and that states that the registration of the design has been revoked and that the design is taken never to have been registered. (5) The Registrar must not revoke the registration of a design under this section unless the Registrar has given each original registered owner a reasonable opportunity to be heard. (6) The Registrar must not revoke the registration of a design under this section while relevant proceedings in relation to that design are pending. (7) An appeal lies to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) against a decision of the Registrar under this section. 53 Applications by persons declared to be entitled persons in court proceedings (1) This section applies if, in any proceedings in a court in relation to a design, the court is satisfied either: (a) that a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or (b) that each original registered owner of the design was an entitled person at the time the design was first registered, but that another person or persons were also entitled persons at that time. (2) In addition to any other order it may make in the proceedings, the court may declare that a person whom the court is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection. (3) The court may not make an order under subsection (2) unless the registration of the design has been revoked. 54 Applications by entitled persons after revocation following surrender of registration (1) This section applies if: (a) the Registrar revokes the registration of a design under section 50; and (b) the Regi