This compilation was prepared on 4 February 2010 taking into account amendments up to Act No. 131 of 2009
The text of any of those amendments not in force on that date is appended in the Notes section
The operation of amendments that have been incorporated may be affected by application provisions that are set out in the Notes section
Prepared by the Office of Legislative Drafting and Publishing, Attorney-General’s Department, Canberra
Chapter 1—Introductory 1 Part 1—Preliminary 1
1 | Short title [see Note 1].......................................................................1 |
2 | Commencement.................................................................................1 |
3 | Crown to be bound ............................................................................2 |
4 | Application of the Act .......................................................................2 |
Part 2—Interpretation 3 5 Definitions.........................................................................................3 6 Definition of product.........................................................................6 7 Definition of visual feature................................................................7 8 References in this Act to a design......................................................7
Part 1—Simplified outline of Chapter 2 8 9 Simplified outline..............................................................................8
Part 2—Design rights 9 10 Exclusive rights of registered owners................................................9 11 Assignment of interest in a design.....................................................9 12 Power of registered owner to deal with registered design ...............10
Part 3—Ownership of designs 11 13 Who is entitled to be registered as the registered owner of a design ..............................................................................................11 14 Ownership of registered designs......................................................12
Division 1—Registrable designs 13 15 Registrable designs..........................................................................13 16 Designs that are identical or substantially similar in overall
impression .......................................................................................13 17 Certain things to be disregarded in deciding whether a design is new and distinctive ......................................................................14 18 Certain designs not to be treated as other than new and distinctive ........................................................................................14
Division 2—Substantial similarity in overall impression 16 19 Factors to be considered in assessing substantial similarity in overall impression ...........................................................................16
Part 1—Simplified outline of Chapter 3 17 20 Simplified outline............................................................................17
Division 1—Applications 18 21 Person may file a design application ...............................................18 22 A design application may be in respect of more than one design ..............................................................................................18 23 Design applications covering excluded designs...............................19
Division 2—How Registrar must deal with a design application 20 24 Design applications that meet the minimum filing requirements....................................................................................20 25 Publication of receipt of application................................................20
Division 3—Filing date and priority date 21 26 Filing date........................................................................................21 27 Priority date.....................................................................................21
Part 3—Amendment or withdrawal of design applications 22 28 Amendment of design applications..................................................22 29 Disputes between applicants............................................................22 30 Persons may ask for design application to proceed in the person’s name..................................................................................23 31 Publication of certain details of amended application .....................23 32 Withdrawal of designs and design applications...............................23
Part 4—Lapsing of design applications 25 33 Lapsing of design applications ........................................................25
Part 1—Simplified outline of Chapter 4 26 34 Simplified outline............................................................................26
Part 2—Requests for registration or publication 27 35 Request for registration or publication ............................................27 36 Request for registration or publication—applications in respect of more than one design ......................................................27 37 Request in respect of designs excluded from an application in respect of more than one design ..................................................28 38 Replacement of request for registration with request for publication.......................................................................................28
Part 3—Registration | 29 | |
---|---|---|
Division 1—Formalities check | 29 | |
39 | Formalities check—applications in respect of one design |
only..................................................................................................29 40 Formalities check—applications in respect of more than one design ..............................................................................................29 41 Registrar must give applicants an opportunity to correct
deficiencies......................................................................................30 42 What happens after Registrar gives notice under section 41 ...........30 43 Registrar must refuse to register certain designs..............................31 44 Registrar must register certain designs after refusal........................31
Division 2—Registration procedures 32 45 Registrar must notify applicant of registration and give public notice....................................................................................32
Division 3—Term of registration 33 46 Term of registration.........................................................................33 47 Renewal of registration....................................................................33 48 Ceasing of registration.....................................................................33 49 Surrender of registration..................................................................34 50 Revocation of registration on surrender...........................................34
Division 4—Revocation on grounds relating to entitled persons 36 51 Revocation of registration on grounds relating to entitled
persons.............................................................................................36 52 Procedures in relation to application ...............................................36 53 Applications by persons declared to be entitled persons in
court proceedings.............................................................................37 54 Applications by entitled persons after revocation following surrender of registration...................................................................37 55 Priority date of design if an application filed by a person declared to be an entitled person .....................................................38 56 Meaning of original registered owner.............................................38
Part 4—Publication 39 57 Publication of a design ....................................................................39 58 What happens after Registrar gives notice under section 57 ...........39 59 Refusal to publish............................................................................40
Part 5—Certain documents to be available for public inspection 41 60 Design applications for registered designs and associated documents to be open for public inspection ....................................41 61 Certain documents not to be published............................................42
Part 1—Simplified outline of Chapter 5 43 62 Simplified outline............................................................................43
63 Examination of design.....................................................................44
64 Requirements for request for examination of design.......................44
Part 3—Examination 46 65 What Registrar must do in examining a design ...............................46 66 Amendment of registration..............................................................46 67 Certificate of examination where registration valid.........................47 68 Revocation of registration after examination...................................48
Part 4—Material may be provided to Registrar 49 69 Certain materialmay beprovided to Registrar................................49
Part 1—Simplified outline of Chapter 6 50 70 Simplified outline............................................................................50
Part 2—Infringement of registered design 51 71 Infringement of design ....................................................................51 72 Certain repairs do not infringe registered design.............................52 73 Infringement proceedings................................................................53 74 Counter-claims ................................................................................54 75 Remediesforinfringement..............................................................54 76 Intervention by Registrar.................................................................55
Part 3—Relief from unjustified threats 56 77 Application for relief from unjustifiedthreats.................................56 78 Court’s power to grant relief............................................................56 79 Counter-claim..................................................................................56 80 Mere notification of registration not a threat...................................57 81 Legal practitioners, registered patent attorneys and registered trade marks attorneys.......................................................................57
Part 1—Simplified outline of Chapter 7 58 82 Simplified outline............................................................................58
83 Jurisdictionof Federal Court...........................................................59
84 Jurisdiction of other prescribed courts.............................................59
85 Exercise of jurisdiction....................................................................59 86 Transfer of proceedings etc. ............................................................60 87 Appeals............................................................................................60 88 Powers of Federal Court on hearing an appeal................................61 89 Registrar may appear in appeals......................................................61
Part 3—Compulsory licences and revocation of registration 62 90 Person may apply to court for compulsory licence..........................62 91 Terms of compulsory licence...........................................................62 92 Revocation of registration after grant of compulsory licence..........63
Part 4—Revocation of registration by court in other circumstances 64 93 Revocation of registration in other circumstances...........................64
Part 1—Simplified outline of Chapter 8 65 94 Simplified outline............................................................................65
Part 2—Use by the Crown 66 95 Meaning of terms.............................................................................66 96 Use of design by the Commonwealth or a State..............................66 97 Applicants, entitled persons and registered owners to be informed of use................................................................................67 98 Termsof use....................................................................................67 99 Previous agreements inoperative.....................................................67 100 Infringement....................................................................................68 101 Declarationby court........................................................................68 102 Use of design to cease under court order.........................................68 103 Sale of products...............................................................................69 104 Forfeited products............................................................................69 105 Supply of products by the Commonwealth to foreign countries ..........................................................................................69
Part 3—Acquisition by and assignments to the Crown 70 106 Acquisition of design by the Commonwealth..................................70 107 Assignment of design to the Commonwealth..................................70
Part 4—Prohibition orders 72 108 Prohibition of publication of information about designs .................72 109 Publication of information about designs........................................72
Chapter 9—The Register 74 110 Simplified outline............................................................................74 111 Registrar must keep Register...........................................................74 112 Register may be kept by computer ..................................................74
113 Inspection of Register......................................................................75 114 Amendments of Register to record changes of ownership...............75 115 Amendments of Register made to give effect to certain
decisions..........................................................................................76 116 Reissue of certificates......................................................................76 117 Trusts not to beentered in Register.................................................76 118 Evidentiary provision ......................................................................76 119 Admissibility of unregistered interests............................................77 120 Rectification of Register..................................................................77
Chapter 10—Administration 78 121 Simplified outline............................................................................78 122 Registrar..........................................................................................78 123 Deputy Registrars............................................................................78 124 Delegation by Registrar...................................................................79 125 Designs Office.................................................................................79 126 Seal of Designs Office.....................................................................79 127 Registrar’s Powers...........................................................................79 128 Recovery of costs ............................................................................80
Part 1—Simplified outline of Chapter 11 81 129 Simplified outline............................................................................81
Part 2—Fees 82 130 Fees .................................................................................................82
Part 3—Offences 83 131 False entries in Register...................................................................83 132 False representation that a design is registered................................83 133 False representations about the Designs Office...............................84 134 Failure to comply with requirements of Registrar ...........................84 135 Officers not to traffic etc. in designs................................................85
Part 4—Review of the Registrar’s decisions 86 136 Review by Administrative Appeals Tribunal...................................86
Part 4A—Doing act after end of period otherwise provided for doing it 87 136A Doing act when Designs Office reopens after end of period otherwise provided for doing act.....................................................87
Part 5—Extensions of time 89 137 Extensions of time...........................................................................89 138 Consequences of extension..............................................................90 139 Protection of third parties................................................................90
140 Infringement proceedings................................................................91
Part 6—Other 92 141 Powers of agents..............................................................................92 142 Right of lien of registered patent attorney and registered trade marks attorney........................................................................92 143 Revocation of registration does not affect court decisions and things done under contracts before revocation ................................92 144 Filing of documents.........................................................................92 145 Service of documents ......................................................................92 146 Death of applicant before application determined...........................93 147 Death of person after design registered ...........................................93 148 Exercise of discretionary power by Registrar..................................93 149 Regulations......................................................................................93
Part 1—Repeal of Designs Act 1906 96 150 Repeal..............................................................................................96
Part 2—Transitional and saving provisions 97 151 Application of this Act to certain designs........................................97 152 Term of registration of certaindesigns............................................97 153 Applications made before commencing day....................................98 154 Other applications and proceedings.................................................98 155 Pending proceedings........................................................................98 156 Infringement under old Act .............................................................98 157 Registrar and Deputy Registrar .......................................................99 158 The Register ..................................................................................100 159 Conversion of transitional applications .........................................100 160 Effect of a converted application...................................................100 160A Approvals under subsection 40A(6) of old Act.............................101 161 Definitions.....................................................................................101
Notes 103
An Act relating to designs, and for related purposes
1 Short title [see Note 1] This Act may be cited as the Designs Act 2003.
(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, on the day or at the time specified in column 2 of the table.
Commencement information
Column 1 Column 2 Column 3
Provision(s) | Commencement | Date/Details |
---|---|---|
1. Sections 1 and 2 and anything in this Act not | The day on which this Act receives the Royal Assent | 17 December 2003 |
elsewhere covered | ||
by this table | ||
2. Sections 3 to 161 | A single day to be fixed by Proclamation, subject to subsection (3) | 17 June 2004 |
Note: This table relates only to the provisions of this Act as originally passed by the Parliament and assented to. It will not be expanded to deal with provisions inserted in this Act after assent.
Chapter 1 Introductory Part 1 Preliminary
Section 3
This Act extends to:
Designs Act 2003
Introductory Chapter 1 Interpretation Part 2
Section 5
5 Definitions
In this Act, unless the contrary intention appears: Agency has the same meaning as in the Public Service Act 1999. artistic work has the same meaning as in the Copyright Act 1968. Australia includes each external Territory. authority, in relation to the Commonwealth, a State or a Territory,
means a body established for a public purpose by or under a law of
the Commonwealth, State or Territory. certificate of examination means a certificate of examination of a registered design issued under Chapter 5.
Commonwealth includes a Commonwealth authority. complex product means a product comprising at least 2 replaceable
component parts permitting disassembly and re-assembly of the product. continental shelf means the continental shelf of Australia as
defined in the Seas and Submerged Lands Act 1973.
Convention country means a country declared by the regulations to be a Convention country for the purposes of this Act. corresponding design, in relation to an artistic work, has the same
meaning as in Division 8 of Part III of the Copyright Act 1968.
Deputy Registrar means a Deputy Registrar appointed under section 123. design, in relation to a product, means the overall appearance of
the product resulting from one or more visual features of the product. Note: See also section 8. design application means an application filed under section 21.
Chapter 1 Introductory Part 2 Interpretation
Section 5
Designs Office means the Designs Office established by section 125.
employee means a person, other than the Registrar or a Deputy Registrar, who:
entitled person, in relation to a design, means a person entitled under section 13 to be entered in the Register as the registered owner of the design.
examination, in relation to a design, means examination of the design under section 65.
file means file with the Designs Office.
Note: Section 144 deals with filing.
filing date has the meaning given by section 26.
head, in relation to the Designs Office of a Convention country, means the official chief (however described) of that Office.
infringement proceedings means an action or proceedings for the infringement of a registered design.
initial application has the meaning given by section 23.
legal personal representative, in relation to a deceased person, means a person to whom:
legal practitioner means a barrister or solicitor of the High Court of Australia or of the Supreme Court of a State or Territory.
Locarno Agreement means the Agreement establishing an International Classification for Industrial Design, signed at Locarno on 8 October 1968.
Designs Act 2003
Introductory Chapter 1 Interpretation Part 2
Section 5
minimum filing requirements has the meaning given by section 21.
prescribed court means the following:
design under section 27. product has the meaning given by section 6. Register means the Register of Designs mentioned in section 111. registered means registered under this Act. registered design, at a particular time, means a design that is
registered at that time. registered owner has the meaning given by section 14. registered patent attorney has the same meaning as in the Patents
Act 1990.
registered trade marks attorney has the same meaning as in the Trade Marks Act 1995. registrable design has the meaning given by section 15. Registrar means the Registrar of Designs holding office under this
Act. relevant parties, in relation to the examination of a design under Chapter 5, means:
Chapter 1 Introductory Part 2 Interpretation
Section 6
relevant proceedings, in relation to a registered design, means court proceedings:
representation means a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen.
State includes a State authority.
term of registration has the meaning given by section 46.
Territory includes a Territory authority.
visual feature has the meaning given by section 7.
Designs Act 2003
Introductory Chapter 1 Interpretation Part 2
Section 7
In this Act, a reference to a design is a reference to a design in relation to a product.
Chapter 2 Design rights, ownership and registrable designs Part 1 Simplified outline of Chapter 2
Section 9
The following is a simplified outline of this Chapter:
This Chapter sets out matters relating to design rights.
Part 2 specifies the exclusive rights of the registered owners of a registered design.
Part 3 specifies:
Part 4 defines the key concepts of registrable design, newness, distinctiveness and substantial similarity. These concepts are important because:
Designs Act 2003
Design rights, ownership and registrable designs Chapter 2 Design rights Part 2
Section 10
Note: Section 114 deals with amendments to the Register to record the assignment of an interest in a design.
Chapter 2 Design rights, ownership and registrable designs Part 2 Design rights
Section 12
Design rights, ownership and registrable designs Chapter 2 Ownership of designs Part 3
Section 13
Chapter 2 Design rights, ownership and registrable designs Part 3 Ownership of designs
Section 14
(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.
Design rights, ownership and registrable designs Chapter 2 Registrable designs: Validity Part 4 Registrable designs Division 1
Section 15
(iii) the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.
Note: For document, see section 25 of the Acts Interpretation Act 1901.
Chapter 2 Design rights, ownership and registrable designs Part 4 Registrable designs: Validity Division 1 Registrable designs
Section 17
(1) For the purpose of deciding whether a design is new and distinctive, the person making the decision must disregard:
but only if a design application in respect of the design is made within the prescribed period.
(2) For the purpose of deciding whether a design is new and distinctive, the person making the decision must disregard:
Design rights, ownership and registrable designs Chapter 2 Registrable designs: Validity Part 4 Registrable designs Division 1
Section 18
by reason only of any use previously made of the artistic work, unless:
(3) In this section:
applied industrially has the meaning given by regulations under section 77 of the Copyright Act 1968.
Chapter 2 Design rights, ownership and registrable designs Part 4 Registrable designs: Validity Division 2 Substantial similarity in overall impression
Section 19
Design applications Chapter 3 Simplified outline of Chapter 3 Part 1
Section 20
The following is a simplified outline of this Chapter:
This Chapter sets out the rules relating to design applications.
Part 2 provides that a person may file a design application in relation to one or more designs.
If the design application meets the minimum filing requirements, the design application is allocated a filing date, and each design disclosed in it obtains a priority date.
Under Chapter 4, a person who has filed a design application may, within the prescribed period, request registration or publication of all or any of the designs disclosed in the application.
Part 3 deals with amendment and withdrawal of design applications.
Part 4 deals with the lapsing of design applications.
Chapter 3 Design applications Part 2 Design applications Division 1 Applications
Section 21
Note: This means that a separate application must be made in respect of designs with a different entitled person or persons.
(3) To avoid doubt, a design that is a common design in relation to more than one product is a design in relation to each product.
Design applications Chapter 3 Design applications Part 2 Applications Division 1
Section 23
(1) If:
registered, or published under section 57; the applicant may file a design application under section 21 in respect of one or more of the excluded designs.
Chapter 3 Design applications Part 2 Design applications Division 2 How Registrar must deal with a design application
Section 24
The Registrar must publish, in the manner prescribed by the regulations, the details prescribed by the regulations in relation to each design application that meets the minimum filing requirements.
Design applications Chapter 3 Design applications Part 2 Filing date and priority date Division 3
Section 26
A design application has the filing date determined in accordance with the regulations.
Chapter 3 Design applications Part 3 Amendment or withdrawal of design applications
Section 28
inclusion of matter which was not in substance disclosed in the original design application, representations or other documents.
(a) enabling the application to specify which of those persons is an entitled person in relation to a design disclosed in the application;
Design applications Chapter 3 Amendment or withdrawal of design applications Part 3
Section 30
(b) regulating the manner in which the application is to proceed.
(3) A person mentioned in subsection (1) or (2) must be:
The Registrar must publish the details prescribed by the regulations in relation to a design application amended by the Registrar under this Part.
(1) A person who has filed a design application may withdraw the application by written notice filed within the period prescribed by the regulations.
Chapter 3 Design applications Part 3 Amendment or withdrawal of design applications
Section 32
Design applications Chapter 3 Lapsing of design applications Part 4
Section 33
(1) A design application lapses if:
in such a way that the Registrar is satisfied that the application meets the applicable requirements of Chapter 4.
Chapter 4 Registration or publication of designs Part 1 Simplified outline of Chapter 4
Section 34
The following is a simplified outline of this Chapter:
Part 2 permits an applicant to request registration or publication of all or any of the designs disclosed in a design application.
The Registrar must register or publish the designs under Part 3 or 4 if specified requirements are satisfied.
The Registrar must refuse to register certain designs (see section 43).
Registration of a design is for a maximum of 10 years (see Division 3 of Part 3).
The registration of a design may be revoked on grounds relating to entitled persons (see Division 4 of Part 3).
Registered designs and associated documents are open for public inspection (see Part 5).
Registration or publication of designs Chapter 4 Requests for registration or publication Part 2
Section 35
Chapter 4 Registration or publication of designs Part 2 Requests for registration or publication
Section 37
A design application in respect of designs excluded from an initial application must include a request for registration or publication of all the designs disclosed in the application.
Registration or publication of designs Chapter 4 Registration Part 3 Formalities check Division 1
Section 39
Chapter 4 Registration or publication of designs Part 3 Registration Division 1 Formalities check
Section 41
If the Registrar is not satisfied as mentioned in section 39 or 40 in relation to a design application, the Registrar must give a written notice to the applicant stating:
and as a result of the amendment or response, the Registrar is satisfied as mentioned in section 39 or 40, as the case requires.
(a) refuse to register the design or designs under section 43; or
Registration or publication of designs Chapter 4 Registration Part 3 Formalities check Division 1
Section 43
(b) give a further notice to the applicant under section 41.
considers that the application does not need to be amended; in such a way that the Registrar is satisfied as mentioned in section 39 or 40 in relation to the design application.
(3) The Registrar must notify the applicant in writing of a refusal under subsection (1) or (2). The notice must set out the reasons for the refusal.
Despite paragraph 43(1)(d), if:
but for the operation of section 108, have been registered; the Registrar must register the design within the period prescribed by the regulations.
Chapter 4 Registration or publication of designs Part 3 Registration Division 2 Registration procedures
Section 45
Registration or publication of designs Chapter 4 Registration Part 3 Term of registration Division 3
Section 46
Chapter 4 Registration or publication of designs Part 3 Registration Division 3 Term of registration
Section 49
(3) If:
the registration of the design ceases at the same time as the expiry of the copyright in the artistic work, and must not be extended after that time.
(4) If the registration of a design ceases under subsection (1), any certificate of examination that was in force in respect of the design at the time the registration ceased is taken to be revoked at that time.
Registration or publication of designs Chapter 4 Registration Part 3 Term of registration Division 3
Section 50
Chapter 4 Registration or publication of designs Part 3 Registration Division 4 Revocation on grounds relating to entitled persons
Section 51
the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.
Registration or publication of designs Chapter 4 Registration Part 3 Revocation on grounds relating to entitled persons Division 4
Section 53
(1) This section applies if:
Chapter 4 Registration or publication of designs Part 3 Registration Division 4 Revocation on grounds relating to entitled persons
Section 55
One or more persons declared to be entitled persons in relation to a design under section 52, 53 or 54 may file an application in respect of the design under section 21, and if they do so, the design has the same priority date as it had in the application in which it was first disclosed.
In this Division:
original registered owner, in relation to a design, means each person entered in the Register as the registered owner at the time the design was first registered.
Registration or publication of designs Chapter 4 Publication Part 4
Section 57
and as a result of the amendment or response, the Registrar is satisfied as mentioned in subsection (2).
Chapter 4 Registration or publication of designs Part 4 Publication
Section 59
Registration or publication of designs Chapter 4 Certain documents to be available for public inspection Part 5
Section 60
Chapter 4 Registration or publication of designs Part 5 Certain documents to be available for public inspection
Section 61
(iii) one or more of the designs was neither registered nor
published; the designs that were excluded or withdrawn, or that were not registered or published, and any documents, or parts of documents, mentioned under paragraphs 60(1)(b) to (g) relating exclusively to those designs, are not to be made available for public inspection under subsection (1).
Examination of designs Chapter 5 Simplified outline of Chapter 5 Part 1
Section 62
The following is a simplified outline of this Chapter:
Chapter 5 deals with the examination of designs by the Registrar.
Designs may be examined after registration on the request of any person or on the Registrar’s initiative.
In examining a design, the Registrar must consider whether there are grounds for revoking the registration of the design.
Chapter 5 Examination of designs Part 2 Requests for examination
Section 63
considering a request for amendments under section 66) unless a court orders that the Registrar continue to examine the design.
(5) For the purposes of this section, the expression a design that has at any time been a registered design:
Examination of designs Chapter 5 Requests for examination Part 2
Section 64
(3) The Registrar must make available for public inspection material contained in a request under this section in relation to the newness and distinctiveness of the design to which the request relates.
Chapter 5 Examination of designs Part 3 Examination
Section 65
(a) increase the scope of the design registration; or
Examination of designs Chapter 5 Examination Part 3
Section 67
(b) alter the scope of the registration by the inclusion of matter that was not in substance disclosed in the original design application, representations or other documents.
Chapter 5 Examination of designs Part 3 Examination
Section 68
Examination of designs Chapter 5 Material may be provided to Registrar Part 4
Section 69
Chapter 6 Infringement Part 1 Simplified outline of Chapter 6
Section 70
The following is a simplified outline of this Chapter:
Chapter 6 is about infringement.
Part 2 provides that a person infringes a registered design if, without the appropriate authority, the person deals in certain ways with a product that embodies the design, or a design that is substantially similar to it.
Part 2 also provides that the registered owner of a design may bring infringement proceedings. The defendant may counter-claim for rectification of the Register.
Various remedies are available, including injunction, damages or an account of profits.
Part 3 deals with unjustified threats of infringement proceedings.
Infringement Chapter 6 Infringement of registered design Part 2
Section 71
Chapter 6 Infringement Part 2 Infringement of registered design
Section 72
the registered owner of the design bears the burden of proving that the person knew, or ought reasonably to have known, that the use or authorisation was not for the purpose mentioned in paragraph (1)(c).
(3) For the purposes of subsection (1):
Infringement Chapter 6 Infringement of registered design Part 2
Section 73
is solely attributable to the fact that only part of the complex product has been repaired.
repair, in relation to a complex product, includes the following:
standard of the informed user, in relation to the overall appearance of a complex product, means the standard of a person who is familiar with the complex product, or with products similar to that product.
use, in relation to a product, means:
(1) The registered owner of a registered design may bring proceedings against another person alleging that the person has infringed the registered design.
Chapter 6 Infringement Part 2 Infringement of registered design
Section 74
A defendant in infringement proceedings in respect of a registered design may apply, by way of counter-claim in the proceedings, for the revocation of the registration of the design under section 93.
Infringement Chapter 6 Infringement of registered design Part 2
Section 76
primary infringement means infringement of a kind mentioned in paragraph 71(1)(a).
secondary infringement means infringement of a kind mentioned in paragraph 71(1)(b), (c), (d) or (e).
A court may grant the Registrar leave to intervene in infringement proceedings.
Chapter 6 Infringement Part 3 Relief from unjustified threats
Section 77
A court may grant the relief sought by an applicant under section 77, unless the respondent satisfies the court that:
Infringement Chapter 6 Relief from unjustified threats Part 3
Section 80
application under section 93, apply for revocation of the registration of the design.
The mere notification of the existence of a registered design does not constitute a threat of infringement proceedings for the purposes of section 77.
A legal practitioner, a registered patent attorney or a registered trade marks attorney is not liable to proceedings under section 77 in respect of an act done in a professional capacity on behalf of a client.
Chapter 7 Jurisdiction and powers of courts Part 1 Simplified outline of Chapter 7
Section 82
The following is a simplified outline of this Chapter:
Chapter 7 deals with the jurisdiction of courts.
Under Part 2, the Federal Court is given jurisdiction in relation to matters arising under the Act. Other prescribed courts have jurisdiction if the Act so provides.
Part 3 deals with the capacity of a prescribed court to issue compulsory licences and to revoke the registration of a design in certain circumstances.
Part 4 also deals with the capacity of a prescribed court to revoke the registration of a design in certain other circumstances.
Jurisdiction and powers of courts Chapter 7 Jurisdiction Part 2
Section 83
83 Jurisdiction of Federal Court
The jurisdiction of a prescribed court under section 83 or 84 is to be exercised by a single judge.
Chapter 7 Jurisdiction and powers of courts Part 2 Jurisdiction
Section 86
Jurisdiction and powers of courts Chapter 7 Jurisdiction Part 2
Section 88
On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following:
The Registrar may appear and be heard at the hearing of an appeal to the Federal Court against a decision or direction of the Registrar, even if the Registrar is not a party to the appeal.
Chapter 7 Jurisdiction and powers of courts Part 3 Compulsory licences and revocation of registration
Section 90
90 Person may apply to court for compulsory licence
Jurisdiction and powers of courts Chapter 7 Compulsory licences and revocation of registration Part 3
Section 92
and may direct that the licence is to be granted on any other terms specified in the order.
Chapter 7 Jurisdiction and powers of courts Part 4 Revocation of registration by court in other circumstances
Section 93
93 Revocation of registration in other circumstances
original registered owner, in relation to a design, means each person entered in the Register as the registered owner at the time the design was first registered.
The Crown Chapter 8 Simplified outline of Chapter 8 Part 1
Section 94
94 Simplified outline
The following is a simplified outline of this Chapter:
Part 2 permits the use of registered designs by the Commonwealth or a State.
Part 3 permits acquisition of registered designs by the Commonwealth.
Part 4 enables the Registrar to prohibit or restrict the publication of information about a design application, if to do so is necessary or expedient in the interests of the defence of the Commonwealth.
Chapter 8 The Crown Part 2 Use by the Crown
Section 95
95 Meaning of terms
State includes the following:
The Crown Chapter 8 Use by the Crown Part 2
Section 97
99 Previous agreements inoperative
(1) This section applies to an agreement or licence (whether made or given before or after the commencement of this section) fixing the terms on which a person other than the Commonwealth or a State may use a design.
Chapter 8 The Crown Part 2 Use by the Crown
Section 100
(2) Such an agreement or licence is inoperative with respect to the use, after the commencement of this section, of the design under section 96, unless the agreement or licence has been approved by the Minister or by the Attorney-General of the State.
100 Infringement
Infringement proceedings do not lie in relation to the use of a design under section 96.
101 Declaration by court
102 Use of design to cease under court order
(a) on and from the day specified in the order; and
The Crown Chapter 8 Use by the Crown Part 2
Section 103
(b) subject to any conditions specified in the order.
103 Sale of products
If a product that embodies a design is sold during the use of the design under section 96, the buyer, and any person claiming through the buyer, is entitled to deal with the product as if the Commonwealth or the State were the registered owner of the design.
104 Forfeited products
Nothing in this Part affects the right of the Commonwealth or of a State, or of a person deriving title directly or indirectly from the Commonwealth or a State, to sell or use a product forfeited under a law of the Commonwealth or the State.
Chapter 8 The Crown Part 3 Acquisition by and assignments to the Crown
Section 106
interest in the design; such compensation as is agreed between the Commonwealth and those persons or, in the absence of agreement, as is determined by a prescribed court.
(5) A person may not apply to a prescribed court for a determination under subsection (4) in relation to a design unless a certificate of examination has been issued in relation to the design.
(1) An entitled person in relation to a design or the registered owner of a design may assign to the Commonwealth the person’s interest in the design and in the exclusive rights obtained, or to be obtained, in the design.
The Crown Chapter 8 Acquisition by and assignments to the Crown Part 3
Section 107
(2) The assignment and all covenants and agreements contained in the assignment are:
Chapter 8 The Crown Part 4 Prohibition orders
Section 108
the design must be registered or published within the prescribed period.
(5) Nothing in this Act prevents disclosing information about a design to an Agency or Commonwealth authority for the purpose of obtaining advice as to whether an order under this section should be made, amended or revoked.
(1) A person commits an offence if:
Maximum penalty: Imprisonment for 2 years.
The Crown Chapter 8 Prohibition orders Part 4
Section 109
(2) Subsection (1) does not apply if the person has the Registrar’s written consent.
Note: A defendant bears an evidentiary burden in relation to the matter in subsection (2) (see subsection 13.3(3) of the Criminal Code).
(3) In this section, engage in conduct means:
Chapter 9 The Register
Section 110
The following is a simplified outline of this Chapter:
Chapter 9 deals with the Register of Designs.
The Chapter requires the Registrar to keep a Register and enter particular matters in it. The Register is to be available for public inspection. The Register can be amended in specified circumstances.
(1) The Register may be kept wholly or partly by use of a computer.
The Register Chapter 9
Section 113
(2) If the Register is kept wholly or partly by use of a computer:
writing and within the period prescribed by the regulations, that the other registered owner does not consent to the assignment.
Chapter 9 The Register
Section 115
(4) A request under subsection (1) or (2) must be made in accordance with the regulations.
If:
registration of the design has been revoked and that the design is taken never to have been registered.
After amending the Register, the Registrar must:
Notice of a trust, whether express, implied or constructive, must not be received by the Registrar or entered in the Register.
The Register Chapter 9
Section 119
signed means signed by or on behalf of the Registrar.
A document or instrument in respect of which an entry has not been made in the Register is not admissible in evidence in a court as proof of title to a design, or an interest in a design, except as follows:
Chapter 10 Administration
Section 121
The following is a simplified outline of this Chapter:
Chapter 10 contains administrative provisions.
The offices of Registrar and Deputy Registrar of Designs are established by this Chapter. The Designs Office is also established.
Administration Chapter 10
Section 124
the opinion, belief or state of mind of the Registrar in relation to a matter:
(1) The Registrar may, for the purposes of this Act:
Chapter 10 Administration
Section 128
(2) The Registrar may protect the confidential status of documents or articles produced in confidence under paragraph (1)(c).
Costs awarded by the Registrar against a party are recoverable as a debt.
Miscellaneous Chapter 11 Simplified outline of Chapter 11 Part 1
Section 129
129 Simplified outline
The following is a simplified outline of this Chapter:
Chapter 11 contains miscellaneous matters. Part 2 deals with fees. Part 3 contains offence provisions. Part 4 sets out decisions that are reviewable by the Administrative
Appeals Tribunal. Part 4A lets an act be done after the period otherwise provided for
doing the act if that period ends on a day when the Designs Office or a sub-office is not open for business. Part 5 gives the Registrar the power to extend the time within
which specified things must be done. Part 6 sets out regulation-making powers and other provisions dealing with miscellaneous matters.
Chapter 11 Miscellaneous Part 2 Fees
Section 130
130 Fees
Miscellaneous Chapter 11 Offences Part 3
Section 131
131 False entries in Register
(1) A person commits an offence if:
Maximum penalty: Imprisonment for 12 months.
(2) A person commits an offence if:
Maximum penalty: Imprisonment for 12 months.
(1) A person commits an offence if:
Maximum penalty: 60 penalty units.
(2) A person commits an offence if the person:
Maximum penalty: 60 penalty units.
(3) A person commits an offence if:
(a) the person sells a product which embodies a design; and
Chapter 11 Miscellaneous Part 3 Offences
Section 133
Maximum penalty: 60 penalty units.
(4) Strict liability applies to paragraph (3)(b).
Maximum penalty: 30 penalty units.
(1) A person commits an offence if:
(a) the person is subject to a requirement to:
Miscellaneous Chapter 11 Offences Part 3
Section 135
(iii) produce a document or article to the Registrar; or
(iv) be sworn or make an affirmation in proceedings before the Registrar; and
Maximum penalty: 30 penalty units.
(2) Subsection (1) does not apply if the person has a lawful excuse.
Note: A defendant bears an evidential burden in relation to the matter in subsection (2) (see subsection 13.3(3) of the Criminal Code).
(3) A person is excused from the requirements of paragraph (1)(a) if those requirements might tend to incriminate the person or expose the person to a penalty.
Note: A defendant bears an evidential burden in relation to the matter in subsection (3) (see subsection 13.3(3) of the Criminal Code).
(4) In this section:
engage in conduct means:
(1) The Registrar, a Deputy Registrar or an employee commits an offence if he or she sells, acquires or traffics in:
Maximum penalty: 60 penalty units.
Note: A defendant bears an evidential burden in relation to the matter in subsection (3) (see subsection 13.3(3) of the Criminal Code).
Chapter 11 Miscellaneous Part 4 Review of the Registrar’s decisions
Section 136
136 Review by Administrative Appeals Tribunal
decision has the same meaning as in the Administrative Appeals Tribunal Act 1975.
Miscellaneous Chapter 11 Doing act after end of period otherwise provided for doing it Part 4A
Section 136A
136A Doing act when Designs Office reopens after end of period otherwise provided for doing act
Declarations
Relationship with other law
Chapter 11 Miscellaneous Part 4A Doing act after end of period otherwise provided for doing it
Section 136A
Exception for prescribed act
(7) This section does not apply to a prescribed act.
Note: Subsection 36(2) of the Acts Interpretation Act 1901 is relevant to a prescribed act.
Miscellaneous Chapter 11 Extensions of time Part 5
Section 137
the relevant act that is required to be done within a certain time is not, or cannot be, done within that time.
Chapter 11 Miscellaneous Part 5 Extensions of time
Section 138
(7) In this section:
relevant act means an action (other than a prescribed action) in relation to:
(1) If:
the application or registration must be treated as having been restored on the day on which the extension is granted.
(2) If an application or registration is restored under subsection (1), the Registrar must:
Miscellaneous Chapter 11 Extensions of time Part 5
Section 140
Infringement proceedings cannot be brought in respect of an infringement committed:
Chapter 11 Miscellaneous Part 6 Other
Section 141
Part 6—Other
An agent may do any act in connection with the registration of designs, on behalf of any other person.
The regulations may provide that a registered patent attorney or a registered trade marks attorney has, in relation to documents and property of a client in a matter relating to designs, the same right of lien that a solicitor has in relation to the documents and property of a client.
The revocation of the registration of a design does not affect the operation of a court decision made before the revocation, or things done under a contract before the revocation.
A document may be filed:
Where this Act provides for a document to be served on, or given or sent to, a person and the person has given the Registrar an address in Australia for service of documents, the document may be served on, or given or sent to, the person by post to that address.
Miscellaneous Chapter 11 Other Part 6
Section 146
If an applicant for registration or publication of a design dies before the application is determined, the person’s legal representative may proceed with the application.
The Registrar must not exercise a discretionary power under this Act adversely to a person without giving that person an opportunity to be heard.
Chapter 11 Miscellaneous Part 6 Other
Section 149
a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and
Miscellaneous Chapter 11 Other Part 6
Section 149
(3) Despite the repeal of the Designs Act 1906 by this Act, regulations made under paragraph (2)(l) may provide for the continued operation of specified provisions of the Designs Act 1906 in relation to prescribed persons or matters, or in prescribed circumstances.
Chapter 12 Repeal, transitional and saving provisions Part 1 Repeal of Designs Act 1906
Section 150
Chapter 12—Repeal, transitional and saving provisions
Part 1—Repeal of Designs Act 1906
The Designs Act 1906 is repealed.
Repeal, transitional and saving provisions Chapter 12 Transitional and saving provisions Part 2
Section 151
Part 2—Transitional and saving provisions
Despite section 151:
Chapter 12 Repeal, transitional and saving provisions Part 2 Transitional and saving provisions
Section 153
Note: Section 152 deals with the application of section 27A of the old Act.
156 Infringement under old Act
(1) This section applies to the following designs:
Repeal, transitional and saving provisions Chapter 12 Transitional and saving provisions Part 2
Section 157
(2) If:
immediately before the commencing day; an action may be brought under this Act for infringement of the design.
A person who held office as the Registrar, or as a Deputy Registrar, under the old Act immediately before the commencing
Chapter 12 Repeal, transitional and saving provisions Part 2 Transitional and saving provisions
Section 158
day continues to hold office as the Registrar or Deputy Registrar (as the case requires) under this Act on and after that day.
On and after the commencing day, the Register within the meaning of the old Act is taken to be the Register within the meaning of this Act.
Repeal, transitional and saving provisions Chapter 12 Transitional and saving provisions Part 2
Section 160A
this Act in respect of one or more of the excluded designs; the term of registration of the excluded designs starts from the date of the conversion request under subsection 159(1).
160A Approvals under subsection 40A(6) of old Act
An approval that was in force under subsection 40A(6) of the old Act immediately before the commencing day has effect on and after that day as if it were an approval under subsection 99(2) of this Act.
161 Definitions
In this Chapter:
commencing day means the day on which this section commences.
old Act means the Designs Act 1906.
transitional application means an application for registration of a design that:
(a) is made under the old Act before the commencing day; and
Chapter 12 Repeal, transitional and saving provisions Part 2 Transitional and saving provisions
Section 161
Notes to the Designs Act 2003
Table of Acts
Notes to the Designs Act 2003 Note 1
The Designs Act 2003 as shown in this compilation comprises Act No. 147, 2003 amended as indicated in the Tables below.
For all relevant information pertaining to application, saving or transitional provisions see Table A.
Table of Acts
Act | Number and year | Date of Assent | Date of commencement | Application, saving or transitional |
provisions | ||||
Designs Act 2003 | 147, 2003 | 17 Dec 2003 | Ss. 3–161: 17 June 2004 | |
Remainder: Royal Assent | ||||
Intellectual Property Laws Amendment Act 2006 | 106, 2006 | 27 Sept 2006 | Schedule 12 (items 1, 2): 27 Mar 2007 | — |
Schedule 15 | ||||
(item 1): 28 Sept 2006 | ||||
Personal Property Securities (Consequential Amendments) Act 2009 | 131, 2009 | 14 Dec 2009 | Schedule 2 (items 1–7): [see Note 2 and Table A] | Sch. 2 (item 7) |
Notes to the Designs Act 2003
Table of Amendments
Table of Amendments
ad. = added or inserted am. = amended rep. = repealed rs. = repealed and substituted
Provision affected How affected
Chapter 10
S. 124........................................ am. No. 106, 2006
Chapter 11 Part 1
S. 129........................................ am. No. 106, 2006
Part 4A
Part 4A of Chap. 11................... ad. No. 106, 2006
S. 136A ..................................... ad. No. 106, 2006
Notes to the Designs Act 2003
Note 2
Note 2
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following amendments commence on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
1 Section 5
Insert:
PPSA security interest (short for Personal Property Securities Act
security interest) means:
Note 1: The Personal Property Securities Act 2009 applies to certain security interests in personal property. See the following provisions of that Act:
Note 2: For the meaning of transitional security interest, see section 308 of the Personal Property Securities Act 2009. Division 4 of Part 9.4 of that Act applies to transitional security interests in situations including the bankruptcy or insolvency of a secured party, grantor or debtor.
2 After subsection 12(2)
Insert:
(2A) Despite subsection (1), the recording in the Register of a right that is a PPSA security interest does not affect a dealing with an interest in a registered design.
Notes to the Designs Act 2003
Note 2
3 At the end of section 12
Add:
(4) Subsection (3) does not apply in relation to an equity that is a PPSA security interest.
Note: The Personal Property Securities Act 2009 deals with the rights of purchasers of personal property (including intellectual property such as designs) that is subject to PPSA security interests. That Act also provides for the priority and enforcement of PPSA security interests. See the following provisions of that Act:
4 After subsection 118(3)
Insert:
(3A) This section does not apply in relation to any particulars recorded in the Register in relation to a PPSA security interest.
Note: Certain particulars relating to registrations in respect of PPSA security interests under the Personal Property Securities Act 2009 are admissible in evidence: see section 174 of that Act.
5 Section 119
Before “A document”, insert “(1)”.
6 At the end of section 119
Add:
(2) However, subsection (1) does not restrict the admissibility in evidence in a court of a document or instrument in relation to a PPSA security interest.
Note: Certain particulars relating to registrations in respect of PPSA security interests under the Personal Property Securities Act 2009 are admissible in evidence: see section 174 of that Act.
As at 4 February 2010 the amendments are not incorporated in this compilation.
Notes to the Designs Act 2003
Table A
Table A
Application, saving or transitional provisions
Personal Property Securities (Consequential Amendments) Act 2009
(No. 131, 2009)
The following provision commences on 1 February 2012 or an earlier time determined by the Minister (see section 306 of the Personal Property Securities Act 2009):
Schedule 2
7 Application of amendments of the Designs Act 2003
Note: Items 2 to 6 commence at the registration commencement time within the meaning of section 306 of the Personal Property Securities Act 2009.