Section 19 of the Designs Act gives specific instructions on how to apply the test for distinctiveness. It directs those deciding whether a design is substantially similar in overall impression to another design to:

give more weight to similarities than to differences when comparing designs (s 19(1))

consider the state of development of the prior art base (s 19(2)(a))

if the design application included a statement of newness and distinctiveness, focus on
- the features identified in that statement as new and distinctive (s 19(2)(b)(i))
- the parts of the design to which those features relate, but ‘in the context of the design as a whole’ (s 19(2)(b)(ii))

if there is no statement of newness and distinctiveness, focus on the appearance of the design as a whole (s 19(3))

if the similarity applies to only part of the design, consider ‘the amount, quality and importance of that part in the context of the design as a whole’ (s 19(2)(c))

consider the ‘freedom of the creator of the design to innovate’ (s 19(2)(d))

in considering all these factors, apply the standard of the familiar person / informed user (depending on when the application for the design was lodged) (s 19(4)).

The examiner’s task is to consider all the factors set out in s 19 and assess the overall effect on whether competing designs are substantially similar in overall impression.

Amended Reasons

Amended Reason	Date Amended
	07 Apr 2022
	07 Apr 2022