Australia: New Dawn for Australia’s Registered Designs Laws

Last Updated: 6 April 2004

By Wayne Condon and Richard Hoad

A new day is finally about to dawn for Australia’s registered design laws. After a lengthy period of gestation, the Australian parliament has finally passed new legislation regarding the registration of industrial designs. (Industrial designs protect visual features of shape, configuration, pattern or ornamentation applied to manufactured products.) With effect from 17 June 2004 (or such earlier date as may be proclaimed by the Australian parliament beforehand), the Designs Act 2003 (Cth) will repeal and replace the existing Designs Act 1906 (Cth).

When the new legislation comes into force, Australia’s designs laws will be radically altered. The existing Designs Act has been strongly criticised by industry for many years. In particular, following a number of failed infringement proceedings in Australian courts, there has been widespread industry concern that it is too easy to avoid infringing a registered design. The conventional wisdom has been that almost every registered design is valid but non-infringed. This article examines some of the more significant changes which will be brought into effect by the Designs Act 2003.

Registration and term

The following amendments will be made to the registration process and the term of protection:

  • Under the existing Act, a design has to be "new" and "original" to be registrable. The new Act retains the requirement that the design be new, but substitutes for "original" the requirement that the design be "distinctive". A design will be "new" unless it is identical to a design that forms part of the prior art base and it will be "distinctive" unless it is "substantially similar in overall impression to a design that forms part of the prior art base".

The concept of "substantial similarity in overall impression" will become a critical analysis in the context of both registration and infringement. The issue will be assessed as follows:

    • The design will be assessed from the point of view of someone who is familiar with the product to which the design relates (the "informed user"). Expert evidence will, at least theoretically, become far less relevant. Under the existing Act, expert evidence is commonly called in relation to the issue of whether a registered design is new and original and to identify similarities and differences between a registered design and an allegedly infringing article.
    • In comparing the design sought to be registered with a design forming part of the prior art base, greater weight will need to be given to the similarities between the designs rather than to their differences.
    • The consideration of this issue will involve an assessment of the state of development of the prior art base, any features of the design sought to be registered which are identified as being new and distinctive, the freedom of the designer to innovate and (if only part of the design were substantially similar to an earlier design) the amount, quality and importance of that part in relation to the whole design. If the design application identified particular features of the design as new and distinctive, greater weight will have to be given to those features but the issue will still have to be assessed in the context of the product as a whole.

  • The prior art base will be considerably expanded. Under the existing Act, an application for registration of a design will be refused if the design:
    • differs only in immaterial details or in features commonly used in the relevant trade from a design "registered, published or used in Australia" before the priority date in relation to the same article; or
    • is an obvious adaptation of a design "registered, published or used in Australia" before the priority date in relation to any article.

The new Act provides that the application must be assessed against designs "publicly used in Australia" or "published within or outside Australia". Under the new Act, the prior art base will be expanded to include:

    • designs published overseas (including but not limited to overseas registrations); and
    • designs of different types of articles whether or not it was obvious to adapt those designs to the articles in respect of which the design is sought to be registered.

  • The new Act provides that a design application will only be subjected to a formalities check (to ensure that the application contains all relevant information) before the design is registered. The registered design will only be examined upon the request of any person, by order of a court, or at the initiative of the Registrar. Once examined, if satisfied that the registration was valid, the Registrar will be required to issue a certificate of examination.

  • The maximum term of registration will be significantly reduced – from 16 to 10 years. The reason given by the Government for this amendment is that Australia’s international obligations (under Article 26 of the Agreement on Trade-Related Aspects of Intellectual Property) only require a protection period of 10 years. This can also be seen as a trade-off for supposedly greater protection against the infringement of registered designs.


The provisions dealing with infringement of a registered design have been completely rewritten with the intention of making it easier to establish infringement. The major amendments include:

  • Infringement proceedings will only be able to be commenced after the design has been examined and a certificate of examination granted. A threat to commence proceedings before that time would be likely to constitute an unjustified threat and, on an application by the threatened party, a court could order an injunction preventing the threats being made again and damages to compensate the threatened party for its losses. However, the mere notification of the registration of a design will not be an unjustified threat.
  • The current infringement tests of obvious and fraudulent imitations will be removed. Instead, a person will infringe a registered design if the person, without the consent of the owner of the registered design, makes, imports, sells, hires or offers for sale or hire "a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design". In assessing whether a product is "substantially similar in overall impression", it will be necessary to consider the same factors as were discussed earlier in relation to the registrability of designs. Importantly, in considering infringement more weight must be given to similarities than to difference between the designs.

New spare parts defence

Some time ago, concerns were expressed to an inquiry into the overlap between intellectual property and competition laws1 that design protection for spare parts (e.g. car parts or printer cartridges) could enable the owners of such registered designs to leverage their market power in the spare parts market to dominate the market for the complete product (e.g. cars or printers).

The Australian parliament has addressed these concerns in the new Act by providing that a person will not infringe a registered design if the allegedly infringing product (which would otherwise infringe that registered design) is:

  • a component part of a complex product (where a "complex product" is a product comprising at least two replaceable component parts permitting disassembly and re-assembly); and
  • made, sold or otherwise commercially dealt with "for the purpose of the repair of the complex product so as to restore its overall appearance in whole or part" (for the sake of convenience, this is referred to below as a "genuine repair").

The first condition – that the allegedly infringing product is part of a complex product – means that the defence will not apply where there is no complex product which can be broken down into its component parts. This will pose some difficulties in practice. Consider the case of a muffler which is protected by a registered design. Is the muffler a component part of a complex product (e.g. the exhaust system or perhaps the motor vehicle), or is it an entirely distinct product which cannot itself be broken down into component parts? If the latter, a replacement muffler would fall outside the ambit of the defence.

The second condition – that there is a genuine repair – will be satisfied if the overall appearance of the complex product immediately after the alleged repair were not materially different from its original overall appearance, and provided that any differences which do exist after the alleged repair were solely attributable to the fact that only part of the complex product had been repaired.

The owner of the registered design will bear the onus of proving that the alleged infringer knew, or ought reasonably to have known, that the use was not for the purpose of a genuine repair. An alleged infringer would be in a better position to establish that it did not have the requisite knowledge, than the owner of the registered design would be in to establish the converse. However, the Explanatory Memorandum states that the onus of proof is not placed on the alleged infringer because to do so would act as a disincentive for new participants to enter the market for the supply of the relevant spare parts.

Further, the whole concept of repair to restore overall appearance is somewhat odd. Repair is usually undertake to reinstate function, not appearance. It remains to be seen how the spare parts exception will be applied in practice.

Amended copyright / design overlap laws

Contemporaneously with the Designs Act 2003, the Australian parliament has enacted a separate piece of legislation relating to designs law, the Designs (Consequential Amendments) Act 2003 (Cth). The primary purpose of these consequential amendments is to alter the so-called "copyright / design overlap" provisions in sections 74 to 77 of the Copyright Act 1968 (Cth).

In simple terms, this technical area of the Copyright Act is designed to remove copyright protection for certain copyright works which are exploited industrially. However, the existing provisions lack clarity and their interpretation has always been a hotly debated issue. The amendments are designed to provide clarity to this area of the law, and to close a number of loopholes and anomalies which have developed. The intention is that the amendments will better reflect the underlying policy – that artistic works which are industrially exploited as three-dimensional designs should be denied copyright protection and instead be subject to design protection; but that artistic works which are exploited as two-dimensional designs continue to receive copyright protection (and be entitled to dual protection by design registration where available). It remains to be seen whether this intention has been realised.


The new Act will reduce the term of protection and provide a "spare parts" defence to design infringement. These changes can be considered a trade-off by the owners of registered designers for the fact that it should be easier establish infringement. The Designs Act 2003 should reinvigorate Australia’s designs laws, and provide welcome relief to the creators and owners of innovative designs.

1 The inquiry was conducted by the Intellectual Property and Competition Review Committee, and chaired by economist Henry Ergas. The Committee reported to the Government in September 2000. The Committee’s Final Report can be accessed online at



This article is intended to provide commentary and general information. It should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this article. In respect of legal services provided in NSW, liability limited by the Solicitors' Scheme approved under the Professional Standards Act 1994 (NSW).

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.