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).

The amended Act, applicable to applications filed on or after 11 September 2021 defines the standard as follows:

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).

The standard of the familiar person / informed user is the point of view from which the examiner must apply when assessing newness and distinctiveness. Determining this standard is important – if not critical – in any debate about distinctiveness.

The knowledge base of the familiar person / informed user is taken to be what they knew on the priority date of the design. Any advancements that occurred after that date should not be considered.

Meaning of ‘familiar person’ / ‘informed user’

The ‘familiar person ‘ / ‘informed user’ is a hypothetical person representing the whole class of people who are familiar persons or informed users. This person is familiar with products that are the same as, or similar to, those to which the design relates. Note that this standard does not require the hypothetical person to be an actual user of the product bearing the design.

The concept is flexible. Who the hypothetical familiar person / informed user is will depend on the nature of the product, and there may be more than one category of familiar person / informed user for a product.

Background

Under the 1906 Act, assessment of registrability of a design was to be ‘judged by the eye’ of the examiner or the court.

The Australian Law Reform Commission (ALRC) considered that this test created too much uncertainty about the likely outcome of infringement proceedings. To increase transparency and predictability, it recommended assessing registrability by the standard of an informed user (Designs ALRC Report 74 Recommendation 34).

Effective from 11 September 2021, s 19(4) of the Act establishes the important ‘person familiar with the product’ standard. In 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 replaced the words ‘standard of the informed user’ with ‘person familiar with the product’. The amendment confirms the interpretation taken in Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743 (Multisteps). Where this Chapter refers to an ‘informed user’ it should be read as referring to a ‘person familiar with the product’, based on the interpretation of the court in the Multisteps decision.

For design applications filed prior to 11 September 2021, where registration is subsequently granted and examination is requested, whilst the ‘informed user test’ will be the applicable wording in the examination, those words will be read as referring to a ‘person familiar with the product’, based on the interpretation adopted by the court in Multisteps.