13.1. Assessing newness and distinctiveness: overview

Key legislation in this topic: Designs Act: ss 15, 16, 19

Key related topics: Prior art base, Section 19 requirements for, Standard of the familiar person / informed user, Statement of newness and distinctiveness, Examination and certification

The validity of a design is fundamentally a question of whether the design is new and distinctive. Essentially it is a registrable design if it is new and distinctive (with the exception of designs that the Registrar must refuse to register (s 43 and reg 4.06).

The purpose of examination is to find if there are any earlier identical or similar designs and assess whether the design is new and distinctive compared to these designs.

Examiners assess newness and distinctiveness against the prior art base. In doing so they use the standard of the familiar person / informed user as an objective basis. In other words, they assess the overall impression of the product from the point of view of someone familiar with the product (or similar products). In an examination, an examiner will conduct research and collect prior art. They will then compare the registered design to each of the prior art.

Examiners will always assess newness and distinctiveness by comparing the design to specific published images and publicly used products individually.

Newness

‘New’ in this context means not identical.

Distinctiveness

‘Distinctive’ in this context means not substantially similar. The design must not be substantially similar in overall impression to any design in the prior art base. This includes any design published anywhere in the world or publicly used in Australia.

To be distinctive, a design must be more than merely distinguishable from the prior art.

The test for distinctiveness requires examiners to consider a number of competing elements – see Section 19 requirements for distinctiveness. ​​​​​​​