- Home
- Introduction
- 1. Design rights
- 1.1. Design rights: overview
- 1.2. What a design right protects
- 1.3. Why protect a design?
- 1.4. How designs are protected in Australia?
- 2. Application for registration
- 2.1. Application for registration: overview
- 2.2. Registration process
- 2.3. Submitting an application
- 2.4. Minimum filing requirements
- 2.5. Who is entitled to be a registered owner?
- 2.6. Types of applications (s 22)
- 2.7. Request for registration
- 2.8. Further designs
- 3. Fees
- 3.1. Fees: overview
- 3.2. Application fees
- 3.3. Renewal fees
- 3.4. Examination fees
- 3.5. Hearing fees
- 3.6. Fees for extensions of time
- 3.7. Refunds
- Production test Designs
- 4. Formalities assessment
- 4.1. Formalities assessment: overview
- 4.2. The ‘Formalities check’ and ‘Formal requirements’
- 4.3. Formalities notices
- 5. Applicant details
- 5.1. Applicant name: overview
- 5.1.1. Is the applicant a person?
- 5.1.2. Individual (Australian and overseas, including joint owners)
- 5.1.3. Australian company (Pty Ltd, Ltd)
- 5.1.4. Strata company, owners corporation, body corporate etc
- 5.1.5. Government entity
- 5.1.6. Incorporated association
- 5.1.7. Overseas entity (AG, S.r.L etc)
- 5.1.8. Several applicant names, multiple designs
- 5.1.9. Joint owner names with ABN
- 5.1.10. Partnership
- 5.1.11. Trust/trustee
- 5.1.12. Business names and 'trading as'
- 5.1.13. Applicant name and design owner
- 5.2. Applicant address
- 6. Representations
- 6.1. Representations: overview
- 6.2. General requirements
- 6.3. Formal compliance
- 6.4. Product
- 6.5. Consistency
- 6.6. Text
- 6.7. Common designs
- 6.8. Drawings
- 6.9. Photographs
- 6.10. Specimens or 3D models
- 6.11. Different views
- 6.12. Environmental views
- 6.13 Pairs and mirror images
- 7. Classification
- 7.1. Classification: overview
- 7.2. Classification systems
- 7.3. Finding the right class
- 7.4. Cases of doubt
- 7.5. More than one possible classification
- 7.6. Multiple products or designs
- 8. Examination and certification
- 8.1. Examination and certification: overview
- 8.2. Examination and certification processes
- 8.3. Requesting examination
- 8.4. Third party initiated examinations
- 8.5. Concurrent requests for examination
- 8.6. Expedited examination
- 8.7. Material provided by a third party
- 8.8. Relevant material that must be considered
- 8.9. Time frame for completion of examination and last-minute responses
- 8.10. Withdrawal of request for examination
- 8.11. Notice of intention to certify
- 8.12. Requests for examination after certification
- 8.13. Further examination reports
- 8.14. Revocation
- 8.15. Examination hearings
- 8.16. Examination on Registrar's initiative
- 9. Identifying the design
- 9.1. Identifying the design: overview
- 9.2. Overall appearance
- 9.3. Visual features
- 9.4. Variable visual features
- 9.5. What cannot be a visual feature
- 10. Product
- 10.1. Product: overview
- 10.2. Identifying the product
- 10.3. Things that are not products
- 10.4. Things that are not different products
- 10.5. Product name
- 10.6. Manufactured or handmade
- 10.7. Component part of a complex product
- 10.8. Assembled set or kit
- 10.9. Indefinite dimensions
- 10.10. Examples - things that are / are not products
- 11. Excluded designs
- 11.1. Excluded designs: overview
- 11.2. Priority date of excluded designs
- 11.3. Checking the priority status of an excluded design
- 11.4. Designs that cannot be excluded
- 11.5. Registration/publication requests
- 12. Section 43 refusal to register
- 12.1. Section 43 refusal to register: overview
- 12.2. Medals
- 12.3. Anzac
- 12.4. Currency
- 12.5. Scandalous content
- 12.6. Arms, flags, emblems etc.
- 12.7. Olympic symbols
- 12.8. Integrated circuits
- 13. Assessing newness and distinctiveness
- 13.1. Assessing newness and distinctiveness: overview
- 13.2. Product name and intended use
- 13.3. Identifying the product
- 13.4. Test for newness
- 13.5. Test for distinctiveness
- 13.6. Substantially similar in overall impression
- 13.7. How the design is displayed
- 13.8. Other visual features
- 13.9. Searching
- 14. Section 19 requirements for distinctiveness
- 14.1. Section 19 requirements for distinctiveness: overview
- 14.2. Similarities and differences
- 14.3. State of development of the prior art base
- 14.4. Statement of newness and distinctiveness
- 14.5. Amount, quality and importance
- 14.6. Freedom of the creator of the design to innovate
- 14.7. Familiar person / Informed user
- 15. Statement of newness and distinctiveness
- 15.1. Statement of newness and distinctiveness: overview
- 15.2. Formalities assessment of the SoND
- 15.3. Amendments to the SoND
- 15.4. Using the SoND to assess distinctiveness
- 16. Standard of the familiar person / informed user
- 16.1. Standard of the familiar person / informed user: overview
- 16.2. Identifying the familiar person / informed user
- 16.3. Declarations about the familiar person / informed user
- 16.4. Familiarity with the product
- 16.5. References to European and UK decisions
- 16.6. Familiar person’s / informed user’s knowledge base versus prior art base
- 17. Prior art base
- 17.1. Prior art base: overview
- 17.2 Publicly used in Australia
- 17.3. Published in a document within or outside of Australia
- 17.4. Trade marks and patents as citations
- 17.5. Establishing the publication date
- 17.6. Designs disclosed in applications
- 18. Prior publication or use exceptions
- 18.1. Prior publication or use exceptions: overview
- 18.2. Exhibitions
- 18.3. Unauthorised disclosures
- 18.4. Disclosure to government
- 18.5. Copyright
- 18.6. Grace Period
- Annex A - An example of a grace period declaration
- 19. Priority date
- 19.1. Priority date: overview
- 19.2. Convention application
- 19.3. Multiple bases for priority
- 19.4. Plural designs
- 19.5. When priority must be asserted
- 19.6. Excluded designs
- 19.7. Converted applications
- 19.8. Applications by an entitled person
- 20. Convention priority
- 20.1. Convention priority: overview
- 20.2. Convention countries
- 20.3. Time limit to claim convention priority
- 20.4. Assessing convention priority claims
- 20.5. Convention priority for excluded designs and applications that include more than one design
- 20.6. Basic application
- 20.7. Requesting the basic application
- 20.8. Relevance of the basic application to examination
- 21. Satisfied
- 21.1. Satisfied: overview
- 21.2. Meaning of ‘satisfied’
- 21.3. ‘Satisfied’ as to prior art base
- 21.4. Reasonable doubt, balance of probabilities and uncertainty
- 21.5. ‘Not satisfied’
- 22. Amendments
- 22.1. Amendments: overview
- 22.2. Amending an application
- 22.3. Amending a registration
- 22.4. Inclusion of matter not in substance disclosed
- 22.5. Increasing the scope of the design registration
- 22.6. Other types of amendments
- 23. Extensions of time
- 23.1. Extensions of time: overview
- 23.2. Legal principles
- 23.3. Error or omission by the Registrar
- 23.4. Error or omission by the customer
- 23.5. Circumstances beyond the customer’s control
- 23.6. Registrar’s discretion
- 23.7. Protection for third parties
- 23.8. Period of extension
- 23.9. Extensions process
- 23.10. Advertisement
- 23.11. Request from an unrecorded new owner
- 23.12. Extension of the convention priority period
- 24. Assignments (and other interests)
- 24.1. Assignments and other interests: overview
- 24.2. Recording changes of ownership
- 24.3. Possible complications
- 24.4. Bankruptcy and winding up
- 24.5. Registering other interests
- 25. Ownership disputes
- 25.1. Ownership disputes: overview
- 25.2. Disputes between joint applicants
- 25.3. Disputes where a non-applicant claims ownership
- 25.4. Disputes where some designs have been registered or published
- 25.5. Disputes about recording a change of ownership before registration
- 25.6. Typical situations where ownership disputes arise
- 25.7. Revocation after an ownership dispute
- 26. Production of documents under s 61(1)
- 26.1. Production of documents under s 61(1): overview
- 26.2. Powers of the courts
- 26.3. Powers of the Registrar
- 26.4. Precedent
- 26.5. Who access is granted to
- 26.6. Access in ownership disputes
- 26.7. Where inspection can take place
- 26.8. Right of lien
- 26.9. Draft undertaking for access
- 27. Publication and file access
- 27.1. Publication and file access: overview
- 27.2. Designs not publicly available
- 27.3. Legal exceptions
- 27.4. Freedom of information
- 27.5. Prohibition orders
- 28. Hearings
- 28.1. Hearings: overview
- 28.2. Filing evidence
- 28.3. Disputes over whether the design was new and distinctive at the priority date
- 28.4. Interface with court proceedings
- 29. Glossary
- 30. Citation index
- 31. Keyword index
- 32. Classification listings
- Class Heading Summary
- Class 01 Foodstuffs
- Class 02 Articles of clothing and haberdashery
- Class 03 Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 Brushware
- Class 05 Textile piecegoods, artificial and natural sheet material
- Class 06 Furnishing
- Class 07 Household goods not elsewhere specified
- Class 08 Tools and hardware
- Class 09 Packages and containers for the transport or handling of goods
- Class 10 Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 Articles of adornment
- Class 12 Means of transport or hoisting
- Class 13 Equipment for production, distribution or transformation of energy
- Class 14 Recording, communication or information retrieval equipment
- Class 15 Machines not elsewhere specified
- Class 16 Photographic, cameras, cinematographic and optical apparatus
- Class 17 Musical instruments
- Class 18 Printing and office machinery
- Class 19 Stationery and office equipment, artists and teaching materials
- Class 20 Sales and advertising equipment, signs
- Class 21 Games, toys, tents and sporting goods
- Class 22 Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 Fluid distribution equipment, sanitary, heating, ventilation and air conditioning equipment, solid fuel
- Class 24 Medical and laboratory equipment
- Class 25 Building units and construction elements
- Class 26 Lighting apparatus
- Class 27 Tobacco and smokers supplies
- Class 28 Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 Devices and equipment against fire hazards, for accident prevention and rescue
- Class 30 Articles for the care and handling of animals
- Class 31 Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 Graphic symbols and logos, surface patterns, ornamentation
- 33. Designs (Formal Requirements for Designs Documents) Instrument 2022
9.2. Identifying the design: Overall appearance
The “overall appearance” of a product (effectively the subject matter of the design) is the result of one or more visual features (s 5).
A design right is not based on overall appearance of the product as such – it is based on the overall appearance that results from a visual feature or features.
Where the representation(s) identify all visual features as forming part of the design being applied for, the overall appearance of the product equates to ‘the overall appearance resulting from one or more visual features’. For example (Design 202011431 (coffee maker)):
Where the representation(s) purposely identify and highlight visual features, applied to a product that has other visual (including generic) features, the design right does not equate to the overall appearance of the product. Instead, the contribution the highlighted visual features have as part of forming a view on what is the overall appearance is relevant. The influence or impact these visual features have on the overall appearance when compared to the other features that together form the product bearing the design is important to understand.
It is common for a design to focus on a visual feature (or group of visual features) amongst other features that make up the product. For example in Design 201814169 (wheel), the parts that make up the outer portion have been identified and highlighted (in solid line) as visual features the subject of the design. See below:
Features of a product that are not visual features the focus of the design right will typically be identified in some generic fashion – such as by the use of dotted lines (see directly above). Clear labelling of representations also assists in understanding what is the design being applied for. The features in dotted lines are generic features of the product bearing the design. These features can help identify what is the overall appearance of the product resulting from the visual features that form the basis of the design. See Representations for more information.
Representations may include extraneous elements that are not part of the design, added for reference. A typical example is a representation that shows the product bearing the design in use, or in its environment. Labelling is important and should be used to clarify the relevance of what a representation shows, and what does and does not contribute to the overall appearance and the design. Part of the task of identifying the design is interpreting the representations and other material in the Register entry to establish whether any elements are being disclaimed or clearly do not form part of the design right.
In Review No 2 v Redberry Enterprises [2008] FCA 1588 a representation of the garment design showed it on a store mannequin. There was no suggestion that the mannequin formed part of the design, and at [52] it was stated:
… everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration.
Overall appearance versus overall impression
When determining the subject matter of a design, we are assessing visual features and their influence on what is the overall appearance of the product. However, when determining the newness and distinctiveness of a design, we are assessing the design’s overall impression. These 2 concepts are different.
The overall appearance of the product is made up of all the product’s visual features. Overall appearance is relevant to understanding the scope of the design.
However, a design right allows for visual features to be emphasised as being new and distinctive and the focus of the design being applied for. This will be highlighted in the representations and may be referred to in a statement of newness and distinctiveness.
The design relates to these particular visual feature(s) of a product that may have other features.
So we need to bear in mind that the design is not the overall appearance of the product – it is the overall appearance of the product that results from particular visual feature(s).
For details, see Section 19 requirements for distinctiveness.
Amended Reasons
| Amended Reason | Date Amended |
|---|---|
Minor clarification. |
|