D09.2 Test for Newness

Date Published

S.16(1) specifies the test of newness as:

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

The following points are relevant:

  • The newness test requires a consideration of all features of the design. That is, a comparison of both the product considered as ‘things’ (irrespective of the label used to identify it), and the visual features of the product.
  • The comparison is to be made against a single design. (LED Technologies v Elecspess [2008] FCA 1941 at para 12).
  • The newness test relates to the appearance of the design, not the overall impression. Consequently the presence of a visual feature that is not present in the citation is sufficient to establish newness of the design – even though that feature may have no effect on the overall impression created by the design.
  • The ‘informed user’ concept has no role to play in assessing newness. The test is one of strict identicality.
  • The comparison is of the product as a thing, irrespective of use or purpose. For example if a ‘thing’ used as a milk crate is identical to a ‘thing’ that is a motor cycle carrier rack (see example in D04.3.1), it is the same thing and lacks newness.

Imagine a manufacturing process creating a thing, with each alternate item being sent to person A for a particular use, and the other items being sent to person B for a different use (with no changes being made to the thing). The fact that A and B are using the thing for a different purpose does not make the thing different – it is necessarily the same thing, irrespective of use.

As a practical matter, the objection of newness is likely to arise only by way of self-publication, or by direct copying. Note that the issues of freedom of the creator to innovate, the standard of the informed user, and the statement of newness and distinctiveness, have no role to play when assessing newness.

ALRC recommendation 32 was: “There should continue to be a requirement for registrable designs to be new but this should only be a filter for identical designs. A two-step filter of novelty and distinctiveness should be adopted to assess the eligibility of a design for registration.” This recommendation was accepted.