D09.1 Overview

Date Published

The validity of a design is fundamentally a question of whether the design is new, and distinctive. The examination of a design is limited to the question of whether it is a registrable design [that is, is new and distinctive], plus the matters referred to in regulation 5.02 [that is, the excluded subject matter specified in s.43 and regulation 4.06.]

The test of newness involves a very narrow test of identicality. Most objections to the validity of a design will be a lack of distinctiveness.

The ALRC report made several recommendations [30 to 40] concerning the basis for assessing distinctiveness, most of which were accepted by the Government and implemented in the test set out in s.19 of the Act.

The test for distinctiveness is an involved test that requires consideration of a number of competing elements. These are discussed in more detail below.

D09.1.1  Subject-matter issues

Examination under s.65 is strictly limited to the issues of newness and distinctiveness (together with the grounds of s.43.) Any subject matter issues should have been dealt with as part of the formalities test (see Microsoft Corporation [2008] ADO 2), and should not normally arise in examination. Despite this, it is possible for a design being examined to lack subject matter. Most likely this will occur if the ‘design’ is in respect of visual features in the absence of a product.  (An example would be a font.)

The requirements of newness and distinctiveness (sections15 and 16) are properties of designs; they are not properties of alleged designs. In the event that the subject matter of a design under examination does not involve a product bearing visual features (see definition of design under s.5), it is incapable of satisfying the newness and distinctiveness requirements.

In such circumstances, the examiner will object that the design is inherently not new, and not distinctive, because it is not a design in accordance with the Act – and set out the reasons why it is not considered to be a design.

It might be that the owner will respond by asserting that the subject matter of the design can be classified in the Locarno classification, and therefore meets the requirements of the Act. However the ability to classify in Locarno does not constitute a test for whether the design involves a product bearing visual features. See Microsoft Corporation [2008] ADO 2 at para 15.