13.4. Assessing newness and distinctiveness: Test for newness

Date Published

The test for newness specified in s 16(1) is:

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

This includes any design published anywhere in the world or publicly used in Australia.

Relevant considerations are:

  • The newness test requires us to consider all features of the design – i.e. both the product as a ‘thing’ (regardless of the product name) and the visual features of the product.
  • The comparison is to be made against a single design (see LED Technologies v Elecspess [2008] FCA 1941 at para 12).
  • The newness test relates to the appearance of the design, not the overall impression. This means that a visual feature of the design that is not present in the citation is enough to establish newness of the design – even though it may have no effect on the overall impression created by the design.
  • The ‘familiar person’ or ‘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, regardless of use or purpose. See Product name.

As the test for newness is a very narrow test of identicality, most objections to the validity of a design will be based on a lack of distinctiveness.

Amended Reasons

Amended Reason Date Amended