WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO  IP/N/1/AUS/D/5 
16 January 2008 
 (08-0207) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
 
MAIN DEDICATED INTELLECTUAL PROPERTY  
LAWS AND REGULATIONS NOTIFIED UNDER  
ARTICLE 63.2 OF THE AGREEMENT 
 
AUSTRALIA 
 
 
 The present document reproduces the text
1 of the Designs Act 2003 - No.147, 2003, notified 
by Australia under Article 63.2 of the Ag reement (see document IP/N/1/AUS/2). 
 
 Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA  
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE  
DE L'ARTICLE 63:2 DE L'ACCORD 
 
AUSTRALIE 
 
 
 Le présent document contient le texte
1 de la Loi de 2003 sur les dessins et modèles (n° 147, 
2003), notifiée par l'Australie au titre de l'article 63: 2 de l'Accord (voir le document IP/N/1/AUS/2). 
 
 Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA  
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD  
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
AUSTRALIA 
 
 
 En el presente documento se reproduce el texto
1 de la Ley de dibujos y modelos de 2003, 
Nº 147, 2003), notificado por Australia en virtud de  lo dispuesto en el párrafo 2 del artículo 63 del 
Acuerdo (véase el documento IP/N/1/AUS/2). 
                                                      
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/AUS/D/5 
Page 2  
 
   
 
 
Designs Act 2003 
 
No. 147, 2003 
 
  
 
 
An Act relating to design s, and for related purposes 
    IP/N/1/AUS/D/5 
 Page 3 
 
 
  Contents 
 
Chapter 1—Introductory  Part 1—Preliminary 
 
 1 Short title 
 
 2 Commencement   3 Crown to be bound   4 Application of the Act 
 
Part 2—Interpretation 
 
 5 Definitions  
 6 Definition of product  
  7 Definition of visual feature  
  8 References in this Act to a design  Chapter 2—Design rights, ownership and registrable designs 
 
Part 1—Simplified outline of Chapter 2 
 
 9 Simplified outline 
 
Part 2—Design rights 
 
 10 Exclusive rights of registered owners  
 11 Assignment of interest in a design 
  12 Power of registered owner to deal with registered design  
Part 3—Ownership of designs 
  13 Who is entitled to be registered as the registered owner of a design 
  14 Ownership of registered designs  
Part 4—Registrable designs: Validity 
 
     Division 1—Registrable designs 
 
 15 Registrable designs   16 Designs that are identical or substantially similar in overall impression 
 IP/N/1/AUS/D/5 
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   17 Certain things to be disregarded in d eciding whether a design is new and distinctive 
  18 Certain designs not to be treated as other than new and distinctive  
     Division 2—Substantial similarity in overall impression 
 
 19 Factors to be considered in assessing substantial similarity in overall impression  
Chapter 3—Design applications 
 
Part 1—Simplified outline of Chapter 3 
 
 20 Simplified outline  
Part 2—Design applications 
 
     Division 1—Applications 
 
 21 Person may file a design application   22 A design application may be in respect of more than one design 
 
 23 Design applications covering excluded designs  
     Division 2—How Registrar must deal with a design application 
  24 Design applications that meet the minimum filing requirements 
  25 Publication of receipt of application  
     Division 3—Filing date and priority date 
  26 Filing date 
  27 Priority date  
Part 3—Amendment or withdrawal of design applications 
 
 28 Amendment of design applications   29 Disputes between applicants   30 Persons may ask for design application to proceed in the person’s name 
 
 31 Publication of certain de tails of amended application 
  32 Withdrawal of designs and design applications  Part 4—Lapsing of design applications 
 
 33 Lapsing of design applications   IP/N/1/AUS/D/5 
 Page 5 
 
 
  Chapter 4—Registration or publication of designs 
 
Part 1—Simplified outline of Chapter 4 
 
 34 Simplified outline 
 
Part 2—Requests for registration or publication 
 
 35 Request for registration or publication  
 36 Request for registration or publication—applications in respect of more than one 
design 
  37 Request in respect of designs excluded fro m an application in respect of more than 
one design 
 
 38 Replacement of request for registration with request for publication  
Part 3—Registration 
 
     Division 1—Formalities check 
 
 39 Formalities check—applications in respect of one design only   40 Formalities check—applications in respect of more than one design 
 
 41 Registrar must give applicants an opportunity to correct deficiencies 
  42 What happens after Registrar gives notice under section 41   43 Registrar must refuse to register certain designs  
 44 Registrar must register certain designs after refusal 
 
     Division 2—Registration procedures 
 
 45 Registrar must notify applicant of registration and give public notice 
 
     Division 3—Term of registration 
 
 46 Term of registration   47 Renewal of registration 
 
 48 Ceasing of registration   49 Surrender of registration  
 50 Revocation of registration on surrender 
 
     Division 4—Revocation on grounds relating to entitled persons 
 
 51 Revocation of registration on gr ounds relating to entitled persons IP/N/1/AUS/D/5 
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 52 Procedures in relation to application   53 Applications by persons declared to  be entitled persons in  court proceedings 
 
 54 Applications by entitled persons after re vocation following surrender of registration 
  55 Priority date of design if an applicatio n filed by a person declared to be an entitled 
person 
 
 56 Meaning of original registered owner  
 
Part 4—Publication 
 
 57 Publication of a design 
 
 58 What happens after Registrar gives notice under section 57   59 Refusal to publish  
Part 5—Certain documents to be available for public inspection 
 
 60 Design applications for registered desi gns and associated documents to be open for 
public inspection 
  61 Certain documents not to be published 
 
Chapter 5—Examination of designs 
 
Part 1—Simplified outline of Chapter 5 
 
 62 Simplified outline 
 
Part 2—Requests for examination 
 
 63 Examination of design  
 64 Requirements for request for examination of design 
 
Part 3—Examination 
 
 65 What Registrar must do in examining a design  
 66 Amendment of registration 
  67 Certificate of examination where registration valid   68 Revocation of registration after examination 
 
Part 4—Material may be provided to Registrar 
 
 69 Certain material may be provided to Registrar   IP/N/1/AUS/D/5 
 Page 7 
 
 
  Chapter 6—Infringement 
 
Part 1—Simplified outline of Chapter 6 
 
 70 Simplified outline 
 
Part 2—Infringement of registered design 
 
 71 Infringement of design  
 72 Certain repairs do not infringe registered design 
  73 Infringement proceedings   74 Counter-claims 
 
 75 Remedies for infringement   76 Intervention by Registrar  
Part 3—Relief from unjustified threats 
 
 77 Application for relief from unjustified threats   78 Court’s power to grant relief  
 79 Counter-claim 
  80 Mere notification of registration not a threat   81 Legal practitioners, registered patent a ttorneys and registered trade marks attorneys 
 Chapter 7—Jurisdiction and powers of courts 
 
Part 1—Simplified outline of Chapter 7 
 
 82 Simplified outline 
 
Part 2—Jurisdiction 
 
 83 Jurisdiction of Federal Court   84 Jurisdiction of other prescribed courts 
 
 85 Exercise of jurisdiction   86 Transfer of proceedings etc.  
 87 Appeals 
  88 Powers of Federal Court on hearing an appeal   89 Registrar may appear in appeals IP/N/1/AUS/D/5 
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Part 3—Compulsory licences and revocation of registration 
 
 90 Person may apply to court for compulsory licence  
 91 Terms of compulsory licence 
  92 Revocation of registration after grant of compulsory licence  
Part 4—Revocation of registration by court in other circumstances 
 
 93 Revocation of registration in other circumstances  
Chapter 8—The Crown 
 
Part 1—Simplified outline of Chapter 8 
 
 94 Simplified outline  
Part 2—Use by the Crown 
  95 Meaning of terms 
  96 Use of design by the Commonwealth or a State   97 Applicants, entitled persons and regist ered owners to be informed of use 
 
 98 Terms of use   99 Previous agreements inoperative   100 Infringement 
 
 101 Declaration by court   102 Use of design to cease under court order  
 103 Sale of products 
  104 Forfeited products   105 Supply of products by the Commonwealth to foreign countries  Part 3—Acquisition by and assignments to the Crown 
 
 106 Acquisition of design by the Commonwealth   107 Assignment of design to the Commonwealth 
 
Part 4—Prohibition orders 
 
 108 Prohibition of publication of information about designs   IP/N/1/AUS/D/5 
 Page 9 
 
 
   109 Publication of information about designs 
 
Chapter 9—The Register 
 
 110 Simplified outline 
 
 111 Registrar must keep Register   112 Register may be kept by computer  
 113 Inspection of Register 
  114 Amendments of Register to record changes of ownership   115 Amendments of Register made to give effect to certain decisions 
 
 116 Reissue of certificates   117 Trusts not to be entered in Register   118 Evidentiary provision 
 
 119 Admissibility of unregistered interests   120 Rectification of Register  Chapter 10—Administration 
 
 121 Simplified outline   122 Registrar  
 123 Deputy Registrars 
  124 Delegation by Registrar   125 Designs Office 
 
 126 Seal of Designs Office   127 Registrar’s Powers   128 Recovery of costs 
 
Chapter 11—Miscellaneous 
 
Part 1—Simplified outline of Chapter 11 
  129 Simplified outline 
 
Part 2—Fees 
 
 130 Fees IP/N/1/AUS/D/5 
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Part 3—Offences 
 
 131 False entries in Register  
 132 False representation that a design is registered 
  133 False representations about the Designs Office   134 Failure to comply with requirements of Registrar 
 
 135 Officers not to traffic etc. in designs  
Part 4—Review of the Registrar’s decisions 
  136 Review by Administrative Appeals Tribunal 
 
Part 5—Extensions of time 
 
 137 Extensions of time  
 138 Consequences of extension 
  139 Protection of third parties   140 Infringement proceedings 
 
Part 6—Other 
 
 141 Powers of agents   142 Right of lien of registered patent a ttorney and registered trade marks attorney 
 
 143 Revocation of registration does not aff ect court decisions and things done under 
contracts before revocation 
  144 Filing of documents 
 
 145 Service of documents   146 Death of applicant before application determined   147 Death of person after design registered 
 
 148 Exercise of discretionary power by Registrar   149 Regulations  Chapter 12—Repeal, transitional and saving provisions 
 
Part 1—Repeal of Designs Act 1906 
 
 150 Repeal  IP/N/1/AUS/D/5 
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Part 2—Transitional and saving provisions 
 
 151 Application of this Act to certain designs  
 152 Term of registration of certain designs 
  153 Applications made before commencing day   154 Other applicati ons and proceedings 
 
 155 Pending proceedings   156 Infringement under old Act  
 157 Registrar and Deputy Registrar 
  158 The Register   159 Conversion of tran sitional applications 
 
 160 Effect of a converted application 
  160A Approvals under sub section 40A(6) of old Act 
  161 Definitions 
 IP/N/1/AUS/D/5 
Page 12  
 
  
 
 
Designs Act 2003 
No. 147, 2003 
  
 
An Act relating to design s, and for related purposes 
[Assented to 17 December 2003 ] 
The Parliament of Australia enacts: 
 
  IP/N/1/AUS/D/5 
 Page 13 
 
 
  Chapter 1 —Introductory  
 
Part 1—Preliminary 
   
1  Short title 
 
  This Act may be cited as the Designs Act 2003 . 
 
2  Commencement 
  (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 tim e specified in column 2 of the table. 
 
Commencement information 
Column 1 Column 2 Column 3 
Provision(s) Commen cement Date/Details 
1.  Sections 1 and 2 and anything in this 
Act not elsewhere covered by this table The day on which this Act receives the 
Royal Assent 17 December 2003 
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 th is 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. 
 
 (2) Column 3 of the table is for additional info rmation that is not part of this Act. This 
information may be included in an y published version of this Act. 
 (3) If a provision covered by item 2 of the table does not commence within the period of 6 
months beginning on the day on which this Act receives the Royal Assent, it commences 
on the first day after the end of that period. 
 
3  Crown to be bound 
 (1) This Act binds the Crown in right of th e Commonwealth, of each of the States, of the 
Australian Capital Territory, of the Nort hern Territory and of Norfolk Island. 
 (2) Nothing in this Act makes the Crown liable to be prosecuted for an offence. 
 
4  Application of the Act 
  This Act extends to: 
 (a) each external Territory; and  (b) the continental shelf; and  (c) the waters above the continental shelf; and  (d) the airspace above Australia, each extern al Territory and the continental shelf. IP/N/1/AUS/D/5 
Page 14  
 
  Part 2—Interpretation 
   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 wo rk, 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. 
Designs Office  means the Designs Office established by section 125.  
employee  means a person, other than the Registrar or a Deputy Registrar, who: 
 (a) is a person engaged under the Public Service Act 1999  and is employed in the 
Designs Office; or 
 (b) is not such a person but performs services,  in the Designs Office, for or on behalf 
of the Commonwealth. 
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.  IP/N/1/AUS/D/5 
 Page 15 
 
 
  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: 
 (a) probate of the will of the deceased person; or 
 (b) letters of administration of the estate of the deceased person; or  (c) other like grant; 
has been granted, whether in Australia or elsewhere. 
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. 
minimum filing requirements  has the meaning given by section 21. 
prescribed court  means the following: 
 (a) the Federal Court of Australia; 
 (b) the Supreme Court of a State;  (c) the Supreme Court of the Australian Capital Territory;  (d) the Supreme Court of the Northern Territory;  (e) the Supreme Court of Norfolk Island. 
prior art base  has the meaning given by section 15. 
priority date , in relation to a design, means the priority date of the 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. IP/N/1/AUS/D/5 
Page 16  
 
  relevant parties , in relation to the examination of a design under Chapter 5, means: 
 (a) the registered owner of the design; and 
 (b) the person who requested the examination; and  (c) each person who is entered on the Register as having an interest in the design. 
relevant proceedings , in relation to a registered design, means court proceedings: 
 (a) for infringement of the registered design; or 
 (b) for revocation of the registration of the design; or  (c) in which the validity of the registration of the design is in dispute.  
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. 
 
6  Definition of product  
 (1) For the purposes of this Act, a thing that is manufactured or hand made is a product (but 
see subsections (2), (3) and (4)). 
 (2) A component part of a complex product may be a product for the purposes of this Act, if 
it is made separately from the product. 
 (3) A thing that has one or more indefinite dimensions is only a pr oduct for the purposes of 
this Act if any one or more of th e following applies to the thing: 
 (a) a cross-section taken across any indefinite  dimension is fixed or varies according to 
a regular pattern; 
 (b) all the dimensions remain in proportion; 
 (c) the cross-sectional sh ape remains the same throughout, whether or not the 
dimensions of that shape vary accord ing to a ratio or series of ratios; 
 (d) it has a pattern or ornamentation that repeats itself. 
 (4) A kit which, when assembled, is a partic ular product is taken to be that product. 
 7  Definition of visual feature  
 (1) In this Act: 
visual feature , in relation to a product, includes the shape, configuration, pattern and 
ornamentation of the product. 
 (2) A visual feature may, but need not, serve a functional purpose.  (3) The following are not visual features of a product: 
 (a) the feel of the product;  (b) the materials used in the product;  (c) in the case of a product that has one or more indefinite dimensions:  IP/N/1/AUS/D/5 
 Page 17 
 
 
   (i) the indefinite dimension; and 
 (ii) if the product also has a pattern th at repeats itself—more than one repeat of 
the pattern. 
 
8  References in this Act to a design 
 
  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    9  Simplified outline 
  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 re gistered owners of a registered design. 
Part 3 specifies: 
 (a) who is entitled to be registered as the owner of an unregistered design; 
and 
 (b) who is the registered owner of a registered design. 
Part 4 defines the key concepts of registrable design , newness , distinctiveness and 
substantial similarity . These concepts are important because: 
 (a) in examining a design under Chapter 5, the Registrar must decide 
whether it is new and distinctive when  compared to the prior art base; 
and 
 (b) in deciding whether a person has infringed a registered design under 
Chapter 6, a court must consider whether the allegedly infringing design 
is substantially similar in overall impression to the registered design. 
 
Part 2—Design rights    10  Exclusive rights of registered owners 
 (1) The registered owner of a registered de sign has the exclusive right, during the term of 
registration of the design: 
 (a) to make or offer to make a product, in  relation to which the design is registered, 
which embodies the design; and 
 (b) to import such a product into Australia for sale, or for use for the purposes of any 
trade or business; and 
 (c) to sell, hire or otherwise dispose of, or  offer to sell, hire or otherwise dispose of, 
such a product; and 
 (d) to use such a product in any way fo r the purposes of any trade or business; and IP/N/1/AUS/D/5 
Page 18  
 
   (e) to keep such a product for the purpose of doing any of the things mentioned in 
paragraph (c) or (d); and 
 (f) to authorise another person to do any of the things mentioned in paragraph (a), (b), 
(c), (d) or (e). 
 (2) The exclusive rights mentioned in subsection (1) are personal property and are capable of 
assignment and of devolution by will or by operation of law. 
 (3) This section is subject to this Act. 
 11  Assignment of interest in a design 
 (1) The registered owner of a registered design may assign all or part of the registered 
owner’s interest  in the design by writing. 
 (2) An assignment under subsection (1) must be  signed by, or on behalf of, the assignor and 
the assignee. 
 (3) An assignment under subsection (1) may be for a particular place. 
Note: Section 114 deals with amendments to the Regist er to record the assignment of an interest in a 
design. 
 
12  Power of registered owner to deal with registered design 
 (1) The registered owner of a registered desi gn may, subject to any rights appearing in the 
Register to be vested in another person, deal  with the registered owner’s interest in the 
design as absolute owner of it, and give good discharges for any consideration for such dealing. 
 (2) However, subsection (1) does not protect a person who deals with the registered owner of 
a registered design otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the registered owner. 
 (3) Equities in relation to a registered design may be enforced against the registered owner, 
except to the prejudice of a purchaser in good faith for value. 
 
Part 3—Ownership of designs 
   13  Who is entitled to be registered as the registered owner of a design 
 (1) A person mentioned in any of the followi ng paragraphs is entitled to be entered on the 
Register as the registered owner of a d esign that has not yet been registered: 
 (a) the person who created the design (the designer ); 
 (b) if the designer created the design in the course of employment, or under a contract, 
with another person—the other person, unless the designer and the other person 
have agreed to the contrary; 
 (c) a person who derives title to the design from a person mentioned in paragraph (a) 
or (b), or by devolution by will or by operation of law; 
 (d) a person who would, on registration of the design, be entitled to have the exclusive 
rights in the design assigned to the person; 
 (e) the legal personal representative of a d eceased person mentioned in paragraph (a), 
(b), (c) or (d).  IP/N/1/AUS/D/5 
 Page 19 
 
 
   (2) Despite subsection (1), a person is not entitled to be entered on the Register as the 
registered owner of a design that has not yet been registered if: 
 (a) the person has assigned all of the person’s  rights in the design to another person; or 
 (b) the person’s rights in the design have devolved on another person by operation of 
law. 
 (3) To avoid doubt: 
 (a) more than one person may be entitled to be  entered on the Register as the registered 
owner of a design; and 
 (b) unless the contrary intention appears, a reference to the registered owner of a 
registered design in this Act is a referenc e to each of the registered owners of the 
design. 
 (4) No person other than a person mentioned in pa ragraph (1)(a), (b), (c), (d) or (e) is entitled 
to be entered on the Register as the register ed owner of a design that has not yet been 
registered. 
 
14  Ownership of registered designs 
 (1) The registered owner of a registered design at a particular time is: 
 (a) the person who, at that time, is entered in the Register as the registered owner of 
the design; or 
 (b) if, at that time, there are 2 or more such persons—each of them. 
 (2) If there are 2 or more registered owners of a registered design: 
 (a) each of them is entitled to an equal, und ivided share in the exclusive rights in that 
design; and 
 (b) subject to paragraph (c), each register ed owner is entitled to exercise the exclusive 
rights in the design to the registered owner’s own benefit without accounting to the 
others; and 
 (c) none of them can grant a licence to exer cise the exclusive rights in the design, or 
assign an interest in the design, w ithout the consent of the others. 
 (3) If a product that embodies a registered design is sold by any of 2 or more registered 
owners of the design, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the registered owners. 
 (4) Subsection (2) is subject to any contrary agreement between the registered owners of a 
registered design. 
 
Part 4—Registrable designs: Validity 
 Division 1—Registrable designs  15  Registrable designs 
 (1) A design is a registrable design  if the design is new and distinctive when compared with 
the prior art base for the design as it existed before the priority date of the design. 
 (2) The prior art base  for a design (the designated design ) consists of: 
 (a) designs publicly used in Australia; and  (b) designs published in a document within or outside Australia; and IP/N/1/AUS/D/5 
Page 20  
 
   (c) designs in relation to which each of the following criteria is satisfied: 
 (i) the design is disclosed in a design application;  (ii) the design has an earlier priority date than the designated design;  (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 . 
 
16  Designs that are identical or subs tantially similar in overall impression 
 (1) A design is new unless it is identical to a d esign that forms part of the prior art base for 
the design. 
 (2) A design is distinctive unless it is substa ntially similar in overall impression to a design 
that forms part of the prior art base for the design (see section 19). 
 (3) Subject to paragraph 15(2)(c), the newness or distinctiveness of a design is not affected 
by the mere publication or public use of the design in Australia on or after the priority date of the design, or by the registration of another design with the same or a later 
priority date. 
 
17  Certain things to be disregarded in deciding whether a design is new and distinctive 
 (1) For the purpose of deciding whether a design is new and distinctive, the person making 
the decision must disregard: 
 (a) any publication or use of the design, with  the consent of the registered owner of the 
design, or the registered owner’s pred ecessor in title, in circumstances prescribed 
by the regulations; and 
 (b) any publication or use of the design, without the consent of the registered owner of 
the design, by another person who derived or obtained the design from the 
registered owner of the design, or from the registered owner’s predecessor in title; 
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: 
 (a) any information given by, or with th e consent of, the registered owner of the 
design, or the registered owner’s predecessor in title, to any of the following, but to 
no other person or organisation: 
 (i) the Commonwealth, a State or a Territory; 
 (ii) a person authorised by the Commonwealth, a State or a Territory to 
investigate the design; and 
 (b) anything done for the purpose of an investigation mentioned in 
subparagraph (a)(ii). 
 18  Certain designs not to be treated as other than new and distinctive 
 (1) This section applies if: 
 (a) copyright under the Copyright Act 1968  subsists in an artistic work; and 
 (b) an application is made by, or with the consent of, the owner of that copyright for 
registration of a corresponding design.  IP/N/1/AUS/D/5 
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   (2) The design is not to be treated, for the pur poses of this Act, as being other than new and 
distinctive, or as having been published, by reason only of any use previously made of 
the artistic work, unless: 
 (a) the previous use consisted of, or include d, the sale, letting for hire or exposing for 
sale or hire of products to which the d esign had been applied industrially, other 
than products specified in regulations for the purposes of paragraph 43(1)(a); and 
 (b) the previous use was by, or with the co nsent of, the owner of the copyright in the 
artistic work. 
 (3) In this section: 
applied industrially  has the meaning given by regulations under section 77 of the 
Copyright Act 1968 . 
 Division 2—Substantial similarity in overall impression  19  Factors to be considered in assessing substantial similarity in overall impression 
 (1) If a person is required by this Act to deci de whether a design is substantially similar in 
overall impression to another design, the person making the decision is to give more 
weight to similarities between the desi gns than to differences between them. 
 (2) The person must also: 
 (a) have regard to the state of developm ent of the prior art base for the design; and 
 (b) if the design application in which the design was disclosed included a statement (a 
statement of newness and distinctiveness ) identifying particular visual features of 
the design as new and distinctive: 
 (i) have particular regard to those features; and 
 (ii) if those features relate to only part  of the design—have particular regard to 
that part of the design, but in the context of the design as a whole; and 
 (c) if only part of the design is substantially  similar to another design, have regard to 
the amount, quality and importance of that part in the context of the design as a 
whole; and 
 (d) have regard to the freedom of the creator of the design to innovate. 
 (3) If the design application in which the desi gn was disclosed did not include a statement of 
newness and distinctiveness in respect of par ticular visual features of the design, the 
person must have regard to the appearance of the design as a whole. 
 (4) In applying subsections (1), (2) and (3), the person must apply the standard of a person 
who is familiar with the product to which the design relates, or products similar to the 
product to which the design relates (the standard of the informed user ). 
 (5) In this section, a reference to a person includes a reference to a court. 
 IP/N/1/AUS/D/5 
Page 22  
 
  Chapter 3—Design applications 
 Part 1—Simplified outline of Chapter 3    20  Simplified outline 
  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 desi gn 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 desi gn 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. 
 
Part 2—Design applications  Division 1—Applications  
21  Person may file a design application 
 (1) A person may file an application (a design application ) in respect of a design. 
 (2) A design application must comply with: 
 (a) any requirements prescribed by the re gulations in relation to representations of 
designs disclosed in the application; and 
 (b) any other requirements prescribed by the regulations. 
These are the minimum filing requirements . 
 (3) A design application may be made by more than one person. 
 (4) A design application must specify the entitle d person or persons in relation to the designs 
disclosed in the design application. 
 22  A design application may be in respect of more than one design 
 (1) A single design application may be in respect of: 
 (a) one design in relation to one product; or 
 (b) one design that is a common design in relation to more than one product; or  (c) more than one design in relation to one product; or  (d) more than one design in relation to mo re than one product, if each product belongs 
to the same Locarno Agreement class.  IP/N/1/AUS/D/5 
 Page 23 
 
 
   (2) If more than one design is disclosed in a design application, the entitled person or 
persons must be the same in relation to each design. 
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. 
 
23  Design applications covering excluded designs 
 (1) If: 
 (a) one or more designs are disclosed in a design application (the initial application ); 
and 
 (b) after the initial application is filed, it is amended under section 28 to exclude one or 
more of those designs (the excluded designs ); and 
 (c) the initial application has not lapsed or been withdrawn; and  (d) none of the designs in the initial appli cation has been registered, or published under 
section 57; 
the applicant may file a design application unde r section 21 in respect of one or more of 
the excluded designs. 
 (2) An application in respect of one or more excluded designs must be filed within the period 
prescribed by the regulations. 
 (3) To avoid doubt, an application in respec t of one or more excluded designs must not 
include a design that has been withdrawn under subsection 32(2) from the initial 
application or refused registration or publication. 
 
Division 2—How Registrar must deal with a design application  
24  Design applications that meet the minimum filing requirements 
 (1) If a design application meets the minimu m filing requirements mentioned in subsection 
21(2), the Registrar must give a written notice to the applicant stating: 
 (a) that the design application meet s the minimum filing requirements; and 
 (b) the filing date of the application; and  (c) if the design application was not accompanied by a request for registration or 
publication of each design disclosed in the application—that such a request may be 
made under section 35. 
 (2) If a purported design application does not meet the minimum filing requirements, the 
Registrar must give a written notice to that effect to the applicant. 
 (3) A notice under subsection (1) or (2) must  be given in accordance with the regulations. 
 
25  Publication of receipt of application 
  The Registrar must publish, in the manne r prescribed by the regulations, the details 
prescribed by the regulations in relation to  each design application that meets the 
minimum filing requirements. 
 IP/N/1/AUS/D/5 
Page 24  
 
  Division 3—Filing date and priority date 
 26  Filing date 
  A design application has the filing date de termined in accordance with the regulations. 
 27  Priority date 
 (1) The priority date of a design disclosed in a design application that meets the minimum 
filing requirements is: 
 (a) the filing date of the design application; or  (b) if, before the design application was file d, an application for protection in respect 
of the design had been made in a C onvention country in accordance with the 
regulations—the date prescri bed by the regulations; or 
 (c) if the regulations provide for a diffe rent date as the priority date—the date 
prescribed by the regulations. 
 (2) If more than one design is disclosed in  a design application, the designs may have 
different priority dates. 
 
Part 3—Amendment or withdrawal of design applications 
   28  Amendment of design applications 
 (1) The Registrar may amend a design applicati on if requested to do so by the applicant. 
 (2) A request under subsection (1) must be made in the manner prescribed by the 
regulations. 
 (3) Despite subsection (1), the Registrar must not amend: 
 (a) any representations included in the design application; or 
 (b) any other documents accompanying the design application; 
in so far as they define a design disclosed in  the design application, in such a way as to 
alter the scope of the application by the in clusion of matter which was not in substance 
disclosed in the original design application, representations or other documents. 
 (4) In this section: 
amend , in relation to a representation of a d esign disclosed in a design application, 
includes the substitution of one repr esentation for another representation. 
 (5) An appeal lies to the Federal Court agains t a decision of the Registrar under this section. 
 
29  Disputes between applicants 
 (1) This section applies if a dispute arises betw een 2 or more persons in relation to whether, 
or in what manner, a design application should proceed. 
 (2) The Registrar may, on a request made in  accordance with the regulations by any of the 
persons, make any determinations the Regist rar thinks fit for either or both of the 
following purposes: 
 (a) enabling the application to specify whic h of those persons is an entitled person in 
relation to a design disclosed in the application; 
 (b) regulating the manner in whic h the application is to proceed.  IP/N/1/AUS/D/5 
 Page 25 
 
 
   (3) A person mentioned in subsection (1) or (2) must be: 
 (a) the applicant; or 
 (b) a person who asserts that the person is  an entitled person in relation to a design 
disclosed in the application. 
 30  Persons may ask for design application to proceed in the person’s name 
 (1) A person may ask the Registrar to direct th at a design application specify the person as: 
 (a) an applicant; or 
 (b) an entitled person in relation to a design disclosed in the application. 
 (2) The Registrar may give the direction if th e person would, if the design were registered, 
be entitled under an assignment or agreem ent, or by operation of law, to: 
 (a) the registered design or an interest in it; or  (b) an undivided share in the register ed design or in such an interest. 
 (3) If the Registrar gives the direction: 
 (a) the person is taken to be an applicant or an entitled person in relation to the design, 
as the case requires; and 
 (b) the application is taken to be amended accordingly. 
 (4) A request under subsection (1) must be in accordance with the regulations. 
 31  Publication of certain details of amended application 
  The Registrar must publish the details prescr ibed by the regulations in relation to a 
design application amended by the Registrar under this Part. 
 32  Withdrawal of designs and design applications 
 (1) A person who has filed a design applica tion may withdraw the application by written 
notice filed within the period prescribed by the regulations. 
 (2) A person who has filed a design applicati on in respect of more than one design may 
withdraw one or more of those designs from th e application by written notice filed within 
the period prescribed by the regulations. 
 (3) If the design application was filed by more than one person, the notice is not effective 
unless each of them consented to the giving of the notice. 
 (4) If a design is withdrawn from a design app lication, the person or persons who withdrew 
the design may not subsequently request registration or publication of the design under Part 2 of Chapter 4 unless the person makes another application in respect of the design 
under section 21. 
 
Part 4—Lapsing of design applications    33  Lapsing of design applications 
 (1) A design application lapses if: 
 (a) a request to register or publish each desi gn disclosed in the application has not been 
made, in accordance with Part 2 of Chapte r 4, within the period prescribed by the 
regulations; or IP/N/1/AUS/D/5 
Page 26  
 
   (b) the Registrar has given the applicant a notice under section 41 or 57 in respect of 
the application, and the applicant has no t, within the period prescribed by the 
regulations: 
 (i) requested that the application be amended; or  (ii) responded in writing to the notice as mentioned in subparagraph 41(c)(ii) or 
57(3)(c)(ii), as the case requires; 
  in such a way that the Registrar is satisfi ed that the application meets the applicable 
requirements of Chapter 4. 
 (2) If the Registrar has, under section 137, exte nded a period within which a thing mentioned 
in subsection (1) is to be done, a reference in  subsection (1) to a period is a reference to 
the extended period. 
 (3) For the purposes of paragraph (1)(a), each design disclosed in the application  does not 
include the following: 
 (a) a design excluded from the application by an amendment under section 28; 
 (b) a design withdrawn from the application under subsection 32(2). 
 (4) The Registrar must publish a notice stating that a design application has lapsed under 
subsection (1). The notice must be in the form prescribed by the regulations. 
 Chapter 4—Registration or publication of designs  Part 1—Simplified outline of Chapter 4    
34  Simplified outline 
  The following is a simplified outline of this Chapter: 
Part 2 permits an applicant to request regi stration 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). 
 
Part 2—Requests for registration or publication    35  Request for registration or publication 
 (1) An applicant may request registration or pub lication of one or more designs disclosed in 
a design application. 
 (2) The request must be:  IP/N/1/AUS/D/5 
 Page 27 
 
 
   (a) included in the design application; or 
 (b) made within the period prescribed by the regulations (but see sections 37 and 38). 
 (3) The request must be in accordance with an y requirements prescribed by the regulations. 
 
36  Request for registration or publication—applications in respect of more than one design 
 (1) If more than one design is disclosed in a design application, a request under section 35: 
 (a) may be in respect of one or more of those designs; and 
 (b) may be for registration of some of  the designs and publication of others. 
 (2) However, if an applicant makes a reque st in respect of only some of the designs 
disclosed in the design applica tion, the following rules apply: 
 (a) the applicant may not subsequently make a request for registration of the designs in 
respect of which no request for registration was made, unless the Registrar 
determines, in accordance with the regulati ons, that the applicant may make such a 
request; 
 (b) the applicant may subsequently make a request for publication of the designs in 
respect of which no request was made. 
 
37  Request in respect of designs excluded from an application in respect of more than one                         design 
  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. 
 
38  Replacement of request for registration with request for publication 
 (1) If an applicant has requested registration of a design under section 35, the applicant may 
replace the request for registration with a re quest for publication of the design by giving 
written notice to the Registrar. 
 (2) The request is to be made within  the period prescribed by the regulations. 
 (3) However, an applicant may not replace a request for publication of a design with a 
request for registration of the design. 
 
Part 3—Registration  
Division 1—Formalities check 
 39  Formalities check—applications in respect of one design only 
 (1) This section applies to a design disclosed in a design application if: 
 (a) the design is the only design disclosed in the application; and 
 (b) the applicant has requested that the design be registered. 
 (2) The Registrar must register the d esign if the Registrar is satisfied that: 
 (a) the design application satisfies the form alities check specified in the regulations; 
and IP/N/1/AUS/D/5 
Page 28  
 
   (b) if the design is purportedly a common design in relation to more than one 
product—that the design is a common de sign in relation to each product; and 
 (c) the Registrar is not required to refuse to register the design under subsection 43(1). 
 
40  Formalities check—applications in respect of more than one design 
 (1) This section applies if: 
 (a) more than one design is disclosed in a design application; and 
 (b) the applicant has requested registration of one or more of those designs. 
 (2) The Registrar must register a design requested to be registered if the Registrar is satisfied 
of the following: 
 (a) that each product to which the desi gn relates belongs to the same Locarno 
Agreement class; 
 (b) if the design requested to be register ed is purportedly a common design in relation 
to more than one product—that the design is a common design in relation to each 
product; 
 (c) that the design application satisfies  the formalities check specified in the 
regulations; 
 (d) that the Registrar is not required to refuse to register the design under 
subsection 43(1). 
 
41  Registrar must give applicants an opportunity to correct deficiencies 
  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: 
 (a) the matters in relation to whic h the Registrar is not satisfied; and 
 (b) that the applicant may request that the Registrar amend the application under 
section 28; and 
 (c) that the application will lapse at the e nd of the period prescribed by the regulations 
for the purposes of paragraph 33(1)(b) unless, during that period: 
 (i) the application is amended; or 
 (ii) the applicant responds in writing to the notice stating why the applicant 
considers that the application does not need to be amended; 
  and as a result of the amendment or response, the Registrar is satisfied as 
mentioned in section 39 or 40, as the case requires. 
 42  What happens after Registrar gives notice under section 41 
 (1) This section applies if the Registrar h as given a written notice to an applicant under 
section 41. 
 (2) If the applicant requests that the Registra r amend the application, the Registrar must 
consider the request under section 28. 
 (3) If the applicant responds in writing to th e notice as mentioned in subparagraph 41(c)(ii), 
the Registrar must consider the response. 
 (4) If, after considering the request or respon se, the Registrar is satisfied as mentioned in 
section 39 or 40 in relation to the design application, the Registrar must register the 
design or designs disclosed in the applicati on under whichever of those sections applies.  IP/N/1/AUS/D/5 
 Page 29 
 
 
   (5) If, after considering the request or response,  the Registrar is not satisfied as mentioned in 
section 39 or 40 in relation to the design application, the Registrar may either: 
 (a) refuse to register the design or designs under section 43; or 
 (b) give a further notice to the applicant under section 41. 
 
43  Registrar must refuse to register certain designs 
 (1) The Registrar must refuse to register a design if: 
 (a) the design is a design, or belongs to a class of designs, prescribed by the 
regulations for the purposes of this paragraph; or 
 (b) the Registrar must not register the design because of section 18 of the Olympic 
Insignia Protection Act 1987 ; or 
 (c) the design is in relation to a product that is:  (i) an integrated circuit within the meaning of the Circuit Layouts Act 1989 ; or 
 (ii) part of such an integrated circuit; or  (iii) a mask used to make such an integrated circuit; or  (d) the design is subject to an order under section 108. 
 (2) Subject to section 42, the Registrar must re fuse to register a design disclosed in a design 
application in respect of which the Registrar has given a notice under section 41, if the applicant has not: 
 (a) amended the application; or  (b) responded in writing to the notice sta ting why the applicant 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. 
 
44  Registrar must register certain designs after refusal 
  Despite paragraph 43(1)(d), if: 
 (a) the Registrar refuses to register a desi gn because the design is subject to an order 
under section 108; and 
 (b) the order is later revoked; and 
 (c) at the date of the revocation of the order, the design would, but for the operation of 
section 108, have been registered; 
the Registrar must register the design with in the period prescribed by the regulations. 
 
Division 2—Registration procedures  45  Registrar must notify applicant of registration and give public notice 
 (1) This section applies if the Registrar is required to register a design under this Act. 
 (2) The Registrar must enter in the Register the particulars mentioned in section 111, to the 
extent that they are applicable. 
 (3) The Registrar must issue a certificate of re gistration to the applicant. The certificate must 
be in the form prescribed by the regulations. IP/N/1/AUS/D/5 
Page 30  
 
   (4) The Registrar must publish a notice stati ng that the design has been registered. The 
notice must be in the form prescribed by the regulations. 
 
Division 3—Term of registration 
 46  Term of registration 
 (1) The term of registration of a design is: 
 (a) 5 years from the filing date of the design application in which the design was first 
disclosed; or 
 (b) if the registration of the design is renewed under section 47—10 years from the 
filing date of the design application in which the design was first disclosed. 
 (2) If a design has been excluded from an initial application (see section 23), the design 
application in which the design was first disclosed is taken, for the purposes of 
subsection (1), to be the initial application. 
 
47  Renewal of registration 
 (1) The registered owner of a registered desi gn may apply for renewal of the registration of 
the design. 
 (2) The application must be made within th e prescribed period after the filing date of the 
design application in which the design was first disclosed. 
 (3) The Registrar must renew the registration of  the design if the application is in the form 
prescribed by the regulations. 
 48  Ceasing of registration 
 (1) The registration of a design ceases if an examination of the design has been requested 
and: 
 (a) within the period prescribed for the purp oses of paragraph 65(3)(b), the Registrar is 
not satisfied as mentioned in para graph 67(1)(a) or 68(1)(a); or 
 (b) the registered owner of the design has not paid the prescribed fee for the 
examination by the end of the period prescribed for payment. 
 (2) The registration of a design also cease s at the end of the period mentioned in 
paragraph 46(1)(a) or (b), as the case requires. 
 (3) If: 
 (a) a registered design was, at the time of registration, a corresponding design in 
relation to an artistic work in wh ich copyright subsisted under the Copyright Act 
1968 ; and 
 (b) the design would not have been registered under this Act apart from section 18; and 
 (c) the copyright in the artistic work under the Copyright Act 1968  expires before the 
date on which registration of the design woul d (apart from this subsection) cease to 
be in force; 
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.  IP/N/1/AUS/D/5 
 Page 31 
 
 
   (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. 
 49  Surrender of registration 
 (1) The registered owner of a registered desi gn may offer to surrender the registration of the 
design. 
 (2) If there is more than one registered owne r of the design, an offer under subsection (1) 
must be made by all the registered owners. 
 (3) An offer under subsection (1): 
 (a) may be made at any time; and  (b) must be in writing and filed; and  (c) must be made in a form prescribed by the regulations. 
 50  Revocation of registration on surrender 
 (1) This section applies if the Registrar rece ives an offer to surrender the registration of a 
design under subsection 49(1). 
 (2) The Registrar must: 
 (a) notify the persons prescribed by the regulations of the offer; and 
 (b) give such persons an opportunity to make submissions in the manner, and within 
the period, prescribed by the regulations. 
 (3) The Registrar may accept the offer, revoke  the registration of the design and make an 
entry in the Register under section 115 after doing the things mentioned in 
subsection (2). 
 (4) If proceedings in a court have been brought  and not completed in relation to the design, 
the Registrar must not accept the offer to su rrender the registration of the design unless: 
 (a) the court consents; or 
 (b) all the parties to the proceedings consent. 
 (5) If a compulsory licence is in force in rela tion to the design, the Registrar must not accept 
the offer to surrender the registration of the design. 
 (6) An appeal lies to the Federal Court agains t a decision of the Registrar under this section. 
 
Division 4—Revocation on grounds relating to entitled persons 
 
51  Revocation of registration on grounds relating to entitled persons 
 (1) A person may apply to the Registrar for re vocation under section 52 of the registration of 
a design. 
 (2) An application under subsection (1) must: 
 (a) contain the information pr escribed by the regulations; and 
 (b) be made in the manner prescribed by the regulations.  IP/N/1/AUS/D/5 
Page 32  
 
  52  Procedures in relation to application 
 (1) This section applies if a person makes an  application under section 51 for revocation of 
the registration of a design. 
 (2) If the Registrar is satisfied that: 
 (a) a person or persons were entitled persons at the time the design was first registered, 
and one or more of the original registered owners of the design was not an entitled 
person at that time; or 
 (b) each original registered owner of the design was an entitled person at the time 
when the design was first registered, but  another person or persons were also 
entitled persons at that time; 
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. 
 (3) If the Registrar makes a declaration under subsection (2), the Registrar must: 
 (a) give the relevant parties a notice stating that the registration of the design is 
revoked; and 
 (b) make an entry in the Register under section 115. 
 (4) The Registrar must also publish a notice,  in the form prescribed by the regulations, 
stating that the registration of the design has been revoked and that the design is taken never to have been registered. 
 (5) The Registrar must not revoke the registration of a design under this section unless the 
Registrar has given each original registered owner a reasonable opportunity to be heard. 
 (6) The Registrar must not revoke the regi stration of a design under this section while 
relevant proceedings in relation to that design are pending. 
 (7) An appeal lies to the Federal Court agains t a decision of the Registrar under this section. 
 
53  Applications by persons declared to be entitled persons in court proceedings 
 (1) This section applies if, in any proceedings in  a court in relation to a design, the court is 
satisfied either: 
 (a) that a person or persons were entitle d persons at the time the design was first 
registered, and one or more of the original  registered owners of the design was not 
an entitled person at that time; or 
 (b) that each original registered owner of  the design was an entitled person at the time 
the design was first registered, but that anot her person or persons were also entitled 
persons at that time. 
 (2) In addition to any other or der it may make in the proceedings, the court may declare that 
a person whom the court is satisfied was an entitled person at the time the design was 
first registered is an entitled person under this subsection. 
 (3) The court may not make an order unde r subsection (2) unless the registration of the 
design has been revoked. 
  IP/N/1/AUS/D/5 
 Page 33 
 
 
  54  Applications by entitled persons after revocation following surrender of registration 
 (1) This section applies if: 
 (a) the Registrar revokes the registration of a design under section 50; and 
 (b) the Registrar is satisfied on applicati on by one or more persons in accordance with 
the regulations: 
 (i) that one or more of the original registered owners was not an entitled person at 
the time the design was first registered , and another person or persons were 
entitled persons at that time; or 
 (ii) that each original registered owner of the design was an entitled person at the 
time the design was first registered, but another person or persons were 
entitled persons at that time. 
 (2) 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. 
 (3) The Registrar must not make a declaration under subsection (2) without first giving each 
original registered owner a reasonable opportunity to be heard. 
 (4) An appeal lies to the Federal Court agains t a decision of the Registrar to make, or refuse 
to make, a declaration under subsection (2). 
 
55  Priority date of design if an application f iled by a person declared to be an entitled person 
  One or more persons declared to be en titled 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. 
 
56  Meaning of original registered owner 
  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. 
 
Part 4—Publication 
   57  Publication of a design 
 (1) This section applies to a design disclosed in a design application if the applicant has 
requested under section 35, 36, 37 or 38 that the design be published. 
 (2) The Registrar must publish the design if th e Registrar is satisfied that the documents 
provided with the design application satisfy any requirements in relation to publication 
that are prescribed by the regulations. 
 (3) If the Registrar is not satisfied as mentione d in subsection (2), the Registrar must give a 
written notice to the applicant stating: 
 (a) the matters in relation to whic h the Registrar is not satisfied; and 
 (b) that the applicant may amend the design application under section 28; and IP/N/1/AUS/D/5 
Page 34  
 
   (c) that the application will lapse at the e nd of the period prescribed by the regulations 
for the purposes of paragraph 33(1)(b) unless, during that period: 
 (i) the application is amended; or 
 (ii) the applicant responds in writing to the notice stating why the applicant 
considers that the application does not need to be amended; 
  and as a result of the amendment or response, the Registrar is satisfied as 
mentioned in subsection (2). 
 
58  What happens after Registrar gives notice under section 57 
 (1) This section applies if the Registrar h as given a written notice to an applicant under 
subsection 57(3). 
 (2) If the applicant requests that the Registra r amend the application, the Registrar must 
consider the request under section 28. 
 (3) If the applicant responds in writing to the notice as mentioned in subparagraph 
57(3)(c)(ii), the Registrar must consider the response. 
 (4) If, after considering the request or respon se, the Registrar is satisfied as mentioned in 
subsection 57(2), the Registrar must publish th e design or designs under that subsection. 
 (5) If, after considering the request or response,  the Registrar is not satisfied as mentioned in 
subsection 57(2), the Registrar may either: 
 (a) refuse to publish the design under section 59; or  (b) give a further notice to the applicant under subsection 57(3). 
 59  Refusal to publish 
 (1) Subject to section 58, the Registrar must refuse to publish a design if: 
 (a) the design is disclosed in a design applic ation in respect of which the Registrar has 
given notice under subsection 57(3); and 
 (b) the applicant has not responded to the notice or amended the application in such a 
way that the Registrar is satisfied as mentioned in subsection 57(2). 
 (2) The Registrar must notify the applicant in  writing of a refusal under subsection (1). The 
notice must set out the reasons for the refusal. 
 Part 5—Certain documents to be available for public inspection    60  Design applications for registered designs an d associated documents to be open for public 
inspection 
 (1) After a design is registered or publis hed, the Registrar must make the following 
documents available for public inspection: 
 (a) the design application in which the design was disclosed; 
 (b) any representations that were included in the design application;  (c) any statement of newness and distinctiv eness in respect of the design that was 
included in the application; 
 (d) any document filed in relation to the desi gn (whether before or after its registration 
or publication);  IP/N/1/AUS/D/5 
 Page 35 
 
 
   (e) any document sent by the Registrar to the applicant or the registered owner in 
connection with the design (whether before  or after its registration or publication); 
 (f) any other document relating to the design application that is in, or comes into, the 
possession of the Designs Office; 
 (g) any other document prescribed by the regulations. 
 (2) Despite subsection (1), the following documen ts are not to be made available for public 
inspection: 
 (a) a document that would be privileged from production in legal proceedings on the 
ground of legal professional privilege; 
 (b) a document that is subject to an order of  a court or tribunal that prohibits disclosure 
of the document or information in the document; 
 (c) a document required to be produced unde r paragraph 127(1)(c), if the Registrar is 
satisfied that the document, or informati on in the document, should not be open for 
public inspection; 
 (d) a document that contains informati on obtained from a document to which any of 
paragraph (a), (b) or (c) applies. 
 (3) If a document mentioned in subsection (1) has been amended, the document before and 
after amendment is to be made available for public inspection. 
 (4) However, if: 
 (a) more than one design was disclo sed in the design application; and 
 (b) any of the following apply:  (i) the application was amended to exclude one or more of the designs; 
 (ii) one or more of the designs was withdrawn from the application;  (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 availabl e for public inspection 
under subsection (1). 
 
61  Certain documents not to be published 
 (1) Except as otherwise provided by this Act, documents of the kind mentioned in subsection 
60(1), other than documents prescribed by the regulations for the purposes of 
paragraph 60(1)(g): 
 (a) must not be published or be open to public inspection; and 
 (b) are not liable to be inspected or pr oduced before the Registrar or in a legal 
proceeding unless the Registrar, court, or any person having power to order 
inspection or production, directs that th e inspection or production be allowed. 
 (2) Notice of an application for the producti on in legal proceedings of a document of the 
kind mentioned in subsection (1) must be give n to the Registrar, who is entitled to be 
heard on the application. 
 (3) Subsection (1) does not prevent documents of the kind mentioned in subsection 60(1) 
from being made available to an applicant fo r registration or publication of the design to 
which the documents relate. 
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  Chapter 5—Examination of designs 
 Part 1—Simplified outline of Chapter 5    62  Simplified outline 
  The following is a simplified outline of this Chapter: 
Chapter 5 deals with the examinati on 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. 
 
Part 2—Requests for examination 
   
63  Examination of design 
 (1) The Registrar must examine a design that h as at any time been a registered design if any 
person requests, or a court orders, that the Registrar examine the design. 
 (2) The Registrar may, on the Registrar’s in itiative and at any time, examine a design that 
has at any time been a registered design. 
 (3) If relevant proceedings in relation to a d esign are pending in a court, the Registrar must 
not examine the design unless the court orders that the Registrar examine the design. 
 (4) If: 
 (a) the Registrar has started to examine a design; and 
 (b) relevant proceedings in relation to the design are started; 
the Registrar must not continue to examine the design (including 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 : 
 (a) does not include a design whose regist ration has ceased because of the operation of 
subsection 48(1); and 
 (b) does not include a design whose registra tion has been revoked, unless a declaration 
of the entitled persons has been made under section 52, 53 or 54 in relation to the 
design. 
 
64  Requirements for request for examination of design 
 (1) A request by a person that the Registrar examine a registered design must satisfy any 
requirements prescribed by the regulations. 
 (2) The request may contain material in rela tion to the newness and distinctiveness of the 
design.  IP/N/1/AUS/D/5 
 Page 37 
 
 
   (3) The Registrar must make available for pub lic inspection material contained in a request 
under this section in relation to the newness and distinctiveness of the design to which 
the request relates. 
 Part 3—Examination    65  What Registrar must do in examining a design 
 (1) If the Registrar receives a request to examin e a registered design, or decides to examine a 
registered design, the Registrar must cons ider whether a ground for revocation under 
subsection (2) exists. 
 (2) The following are grounds for revocation of  the registration of a design for the purposes 
of this Part: 
 (a) the design is not a registrable design; 
 (b) any other ground prescribed by the regulations. 
 (3) The examination must be: 
 (a) conducted in accordance with the pro cedures prescribed by the regulations; and 
 (b) completed within the period prescribed by the regulations. 
 
66  Amendment of registration 
 (1) This section applies if the Registrar is sa tisfied, in the course of examining a registered 
design, that a ground for revocation of the registration of the design has been made out. 
 (2) The Registrar must give written notice to that  effect to the registered owner of the design. 
 (3) The registered owner of the design may requ est that the Registrar amend the Register in 
such a way that the ground for revocation is removed. 
 (4) A request under subsection (3) must be made in the manner prescribed by the 
regulations. 
 (5) The Registrar must consider and deal w ith the request in the manner prescribed by the 
regulations. 
 (6) An amendment must not be such as to: 
 (a) increase the scope of the design registration; or 
 (b) alter the scope of the registration by the inclusion of matter that was not in 
substance disclosed in the original desi gn application, representations or other 
documents. 
 
67  Certificate of examination where registration valid 
 (1) This section applies in relation to a registered design if: 
 (a) the Registrar has examined the design an d is satisfied that a ground for revocation 
of the registration of the design has not been made out, or that any such ground 
would be removed if the Register were  amended as proposed in a request made 
under section 66; and 
 (b) the registration of the design has not ceased under subsection 48(1). 
 (2) The Registrar must give the relevant parties a notice stating: IP/N/1/AUS/D/5 
Page 38  
 
   (a) that the design has been examined; and 
 (b) if the Registrar is satisfied that a ground of revocation coul d be removed if the 
Register were amended as proposed in  a request made under section 66—the 
details of the proposed amendments; and 
 (c) that a certificate of examination is to be issued. 
 (3) If the Registrar remains satisfied as me ntioned in paragraph (1)(a) after giving the 
relevant parties a reasonable opportunity  to be heard, the Registrar must: 
 (a) issue a certificate of examination, in th e form prescribed by the regulations, to the 
registered owner of the design; and 
 (b) record on the Register the issue of that certificate and, if applicable, such 
amendments proposed in a request made under section 66 that the Registrar is 
satisfied would remove a ground of revocation; and 
 (c) publish a notice, in the form pr escribed by the regulations, stating: 
 (i) that an examination of the design has been completed; and  (ii) that infringement proceedings under Chapter 6 may be commenced. 
 (4) An appeal lies to the Federal Court agains t a decision of the Registrar under this section. 
 68  Revocation of registration after examination 
 (1) This section applies in relation to a registered design if: 
 (a) the Registrar has examined the design, a nd is satisfied that a ground for revocation 
of the registration of the design has been made out and the ground would not be removed if the Register were amended as proposed in a request under section 66; 
and 
 (b) the registration of the design has not ceased under subsection 48(1). 
 (2) The Registrar must: 
 (a) give the relevant parties a notice stating that the registration of the design is 
revoked; and 
 (b) make an entry in the Register under section 115. 
 (3) The Registrar must also publish a notice,  in the form prescribed by the regulations, 
stating that the registration of the design has been revoked and that the design is taken 
never to have been registered. 
 (4) The Registrar must not revoke the registration of a design under this section unless: 
 (a) the Registrar has given the registered owner a reasonable opportunity to be heard; 
and 
 (b) if appropriate, the Registrar has given the registered owner a reasonable 
opportunity to amend the relevant registered design for the purpose of removing a 
ground for the revocation of the registration of the design and the registered owner has failed to do so. 
 (5) The Registrar must not revoke the regi stration of a design under this section while 
relevant proceedings in relation to that design are pending. 
 (6) An appeal lies to the Federal Court agains t a decision of the Registrar under this section. 
  IP/N/1/AUS/D/5 
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  Part 4—Material may be provided to Registrar 
   69  Certain material may be provided to Registrar 
 (1) A person may provide to the Registrar materi al relating to whether a registered design is 
new or distinctive within the meaning of Division 1 of Part 4 of Chapter 2. The material 
may be provided even if the person has not  made a request under subsection 63(1) that 
the design be examined. 
 (2) The material is to be provid ed in accordance with the regulations. 
 (3) If a person provides material to the Registrar under subsection (1), the Registrar must: 
 (a) inform the registered owner of the desi gn that the material has been provided; and 
 (b) provide a copy of the material to the registered owner of the design; and  (c) retain the material throughout the period prescribed by the regulations. 
 (4) Nothing in this section is to be taken to require the Registrar to examine a design under 
Part 3. 
 (5) The Registrar must make a copy of  material provided to the Registrar under 
subsection (1) available for public inspection. 
 Chapter 6—Infringement  Part 1—Simplified outline of Chapter 6    
70  Simplified outline 
  The following is a simplified outline of this Chapter: 
Chapter 6 is about infringement. 
Part 2 provides that a person infringes a regi stered design if, without the appropriate 
authority, the person deals in certain ways w ith 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-cla im 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. 
 
 Part 2—Infringement of registered design 
   
71  Infringement of design 
 (1) A person infringes a registered design if, during the term of registration of the design, 
and without the licence or authority of the registered owner of the design, the person: 
 (a) makes or offers to make 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; or IP/N/1/AUS/D/5 
Page 40  
 
   (b) imports such a product into Australia for sale, or for use for the purposes of any 
trade or business; or 
 (c) sells, hires or otherwise disposes of, or o ffers to sell, hire or otherwise dispose of, 
such a product; or 
 (d) uses such a product in any way for th e purposes of any trade or business; or 
 (e) keeps such a product for the purpose of doing any of the things mentioned in 
paragraph (c) or (d). 
 (2) Despite subsection (1), a person does not infringe a registered design if: 
 (a) the person imports a product, in relati on to which the design is registered, which 
embodies a design that is identical to, or substantially similar in overall impression to, the registered design; and 
 (b) the product embodies the design with the licence or authority of the registered 
owner of the design. 
 (3) In determining whether an allegedly infri nging design is substantially similar in overall 
impression to the registered design, a court is to consider the factors specified in 
section 19. 
 (4) Infringement proceedings must be starte d within 6 years from the day on which the 
alleged infringement occurred. 
 
72  Certain repairs do not infringe registered design 
 (1) Despite subsection 71(1), a person do es not infringe a registered design if: 
 (a) the person uses, or authorises another person to use, a product:  (i) in relation to which the design is registered; and  (ii) which embodies a design that is identi cal to, or substantially similar in overall 
impression to, the registered design; and 
 (b) the product is a component part of a complex product; and 
 (c) the use or authorisation is for the purpose of the repair of the complex product so as 
to restore its overall appearance in whole or part. 
 (2) If: 
 (a) a person uses or authorises another person to use a product:  (i) in relation to which a design is registered; and  (ii) which embodies a design that is identi cal to, or substantially similar in overall 
impression to, the registered design; and 
 (b) the person asserts in infringement proceedings that, because of the operation of 
subsection (1), the use or authorisation did not infringe the registered design; 
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): 
 (a) a repair is taken to be so as to restore the overall appearance of a complex product 
in whole if the overall appearance of the complex product immediately after the repair is not materially different from its original overall appearance; and 
 (b) a repair is taken to be so as to restore the overall appearance of a complex product 
in part if any material difference between:  IP/N/1/AUS/D/5 
 Page 41 
 
 
   (i) the original overall appearance of the complex product; and 
 (ii) the overall appearance of the complex product immediately after the repair;   is solely attributable to the fact that only part of the complex product has been 
repaired. 
 (4) In applying subsection (3), a court must  apply the standard of the informed user. 
 (5) In this section: 
repair , in relation to a complex product, includes the following: 
 (a) restoring a decayed or damaged component part of the complex product to a good 
or sound condition; 
 (b) replacing a decayed or damaged component part of the complex product with a 
component part in good or sound condition; 
 (c) necessarily replacing incidental items when restoring or replacing a decayed or 
damaged component part of the complex product; 
 (d) carrying out maintenance on the complex product. 
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: 
 (a) to make or offer to make the product; or  (b) to import the product into Australia for sale, or for use for the purposes of any trade 
or business; or 
 (c) to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, the 
product; or 
 (d) to use the product in any other way for the purposes of any trade or business; or 
 (e) to keep the product for the purpose of doing any of the things mentioned in 
paragraph (c) or (d). 
 
73  Infringement proceedings 
 (1) The registered owner of a registered design may bring proceedings against another 
person alleging that the person has infringed the registered design. 
 (2) Infringement proceedings may be brought in  a prescribed court or in another court that 
has jurisdiction in relation to the proceedings. 
 (3) However, infringement proceedings ma y not be brought under subsection (1) until: 
 (a) the design has been examined under Chapter 5; and  (b) a certificate of examination has been issued. 
 (4) If a person files an application under section 21 for registration of a design as a result of 
the operation of section 55, the person may only bring infringement proceedings in 
respect of infringements of the design occurring after the date on which the application 
was filed under section 21. 
 IP/N/1/AUS/D/5 
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  74  Counter-claims  
  A defendant in infringement proceedings in respect of a registered design may apply, by 
way of counter-claim in the proceedings, fo r the revocation of the registration of the 
design under section 93. 
 
75  Remedies for infringement 
 (1) Without limiting the relief that a court ma y grant in infringement proceedings, the relief 
may include: 
 (a) an injunction subject to such  terms as the court thinks fit; and 
 (b) at the option of the plaintiff—damages or an account of profits. 
 (2) The court may refuse to award damages, reduce the damages that would otherwise be 
awarded, or refuse to make an order for an  account of profits, if the defendant satisfies 
the court: 
 (a) in the case of primary infringement: 
 (i) that at the time of the infringemen t, the defendant was not aware that the 
design was registered; and 
 (ii) that before that time, the defendant  had taken all reasonable steps to ascertain 
whether the design was registered; or 
 (b) in the case of secondary infringement—t hat at the time of the infringement, the 
defendant was not aware, and could not reasonably have been expected to be 
aware, that the design was registered. 
 (3) The court may award such additional dama ges as it considers appropriate, having regard 
to the flagrancy of the infringement  and all other relevant matters. 
 (4) It is prima facie evidence that the defenda nt was aware that the design was registered if 
the product embodying the registered desi gn to which the infringement proceedings 
relate, or the packaging of the product, is marked so as to indicate registration of the 
design. 
 (5) In this section: 
primary infringement  means infringement of a kind me ntioned in paragraph 71(1)(a). 
secondary infringement  means infringement of a kind mentioned in paragraph 71(1)(b), 
(c), (d) or (e). 
 76  Intervention by Registrar 
  A court may grant the Registrar leave to intervene in infringement proceedings. 
 
Part 3—Relief from unjustified threats 
   77  Application for relief from unjustified threats 
 (1) If a person is threatened by another person (the respondent ) with infringement 
proceedings, or other similar proceedings, in respect of a design, an aggrieved person 
(the applicant ) may apply to a prescribed court, or to another court that has jurisdiction 
to hear and determine the application, for: 
 (a) a declaration that the threats are unjustified; and  IP/N/1/AUS/D/5 
 Page 43 
 
 
   (b) an injunction against the continuation of the threats; and 
 (c) the recovery of damages sustained by  the applicant as a result of the threats. 
 (2) A threat mentioned in subsection (1) may be  by means of circulars, advertisements or 
otherwise. 
 (3) If a certificate of examination has not been i ssued in respect of a design, a threat to bring 
infringement proceedings, or other similar proceedings, in respect of the design is an unjustified threat for the purposes of this section. 
 
78  Court’s power to grant relief 
  A court may grant the relief sought by an applicant under section 77, unless the 
respondent satisfies the court that: 
 (a) the design concerned is registered, has been examined and a certificate of 
examination has been issued; and 
 (b) the acts about which the threats were made infringe, or would infringe, the 
registered design. 
 79  Counter-claim 
 (1) The respondent in proceedings under section 77 in respect of a design may apply, by way 
of counter-claim, for relief to which th e respondent would be entitled in separate 
infringement proceedings against the ap plicant in respect of the design. 
 (2) If the respondent applies under subsection (1) by way of counter-claim, the applicant 
may, without making a separate application under section 93, apply for revocation of the registration of the design. 
 (3) The provisions of this Act relating to infr ingement proceedings apply, with the necessary 
modifications, to a counter-c laim under subsection (1). 
 (4) The provisions of this Act relating to pro ceedings for the revocation of the registration of 
a design apply, with the necessary modifications , to an application under subsection (2). 
 
80  Mere notification of registration not a threat 
  The mere notification of the existence of a registered design does not constitute a threat 
of infringement proceedings for the purposes of section 77. 
 
81  Legal practitioners, registered patent a ttorneys and registered trade marks attorneys 
  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    82  Simplified outline 
  The following is a simplified outline of this Chapter: IP/N/1/AUS/D/5 
Page 44  
 
  Chapter 7 deals with the jurisdiction of courts. 
Under Part 2, the Federal Court is given juri sdiction 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. 
 
 
Part 2—Jurisdiction    83  Jurisdiction of Federal Court 
 (1) The Federal Court has jurisdiction with respect to matters arising under this Act. 
 (2) The jurisdiction of the Federal Court to h ear and determine appeals from decisions of the 
Registrar is exclusive of the jurisdiction of any other court (other than the jurisdiction of the High Court under section 75 of the Constitution). 
 (3) A prosecution for an offence against this Ac t must not be brought in the Federal Court. 
 
84  Jurisdiction of other prescribed courts 
 (1) Each prescribed court other than the Federa l Court has jurisdiction in respect of matters 
arising under this Act in relation to which proceedings may be brought in a prescribed 
court. 
 (2) The jurisdiction conferred by subsection (1) on the Supreme Court of a Territory is as 
follows: 
 (a) the jurisdiction is conferred to the exte nt that the Constitution permits so far as it 
relates to: 
 (i) infringement proceedings; or 
 (ii) an application for revocation of registration of a design because of section 74; 
and 
 (b) in any other case, the jurisdiction is conferred only in rela tion to proceedings 
instituted by: 
 (i) a natural person who is resident in the Territory at the time the proceedings 
are brought; or 
 (ii) a corporation that has its principa l place of business in the Territory at the 
time the proceedings are brought. 
 85  Exercise of jurisdiction 
  The jurisdiction of a prescribed court under section 83 or 84 is to be exercised by a single 
judge. 
  IP/N/1/AUS/D/5 
 Page 45 
 
 
  86  Transfer of proceedings etc. 
 (1) A court in which proceedings have been  brought under this Act may transfer the 
proceedings to another prescribed court ha ving jurisdiction to hear and determine the 
proceedings: 
 (a) if the court thinks fit; and 
 (b) upon application of a party made at any stage in the proceedings. 
 (2) If proceedings are transferred from one court to another court under this section: 
 (a) all documents of record relevant to th e proceedings are to be sent to the Registrar 
or other appropriate officer of the other court; and 
 (b) the other court must proceed as if:  (i) the proceedings had been started in that court; and  (ii) the same steps in the proceedings had been taken in that court as had been 
taken in the transferring court. 
 
87  Appeals 
 (1) An appeal lies to the Federal Court from a judgment or order of: 
 (a) another prescribed court exerci sing jurisdiction under this Act; or 
 (b) any other court in a proceeding referred to in section 73 or 77. 
 (2) An appeal does not lie to the full court of  the Federal Court from a judgment or order of a 
single judge of the Federal Court, in the exer cise of its jurisdiction to hear and determine 
appeals from decisions of the Registrar, other than with the leave of the Federal Court. 
 (3) An appeal lies to the High Court, with special leave of the High Court, from a judgment 
or order referred to in subsection (1). 
 (4) No appeal lies from a judgment or order referred to in subsection (1), except as provided 
by this section. 
 
88  Powers of Federal Cour t on hearing an appeal 
  On hearing an appeal against a decision or direction of the Registrar, the Federal Court 
may do any one or more of the following: 
 (a) admit further evidence orally, or on affidavit or otherwise; 
 (b) permit the examination and cross-examination of witnesses (including witnesses 
who gave evidence before the Registrar); 
 (c) order an issue of fact to be tried as it directs; 
 (d) affirm, reverse or vary the Registrar’s decision or direction;  (e) give any judgment, or make any order, th at, in all the circumstances, it thinks fit; 
 (f) order a party to pay costs to another party. 
 
89  Registrar may appear in appeals 
  The Registrar may appear and be heard at th e 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. 
 IP/N/1/AUS/D/5 
Page 46  
 
  Part 3—Compulsory licences and revocation of registration 
   90  Person may apply to court for compulsory licence 
 (1) A person may apply to a prescribed court, after the end of the prescribed period, for an 
order requiring the registered owner of a regi stered design to grant the person a licence to 
do any of the things mentioned in paragraphs  10(1)(a) to (e) in relation to the design. 
 (2) An application under subsection (1) may not be made unless a certificate of examination 
has been issued. 
 (3) After hearing the application, the court ma y make such an order if it is satisfied that: 
 (a) products embodying the design have not b een made in Australia, to the extent that 
is reasonable in the circumstances of the case; and 
 (b) the registered owner of the design has given no satisfactory reason for failing to 
exercise the exclusive rights in the design; and 
 (c) the applicant has tried for a reasonable period, but without success, to obtain from 
the registered owner of the design an authorisation to do, on reasonable terms and 
conditions, any of the things mentioned in paragraphs 10(1)(a) to (e) in relation to 
the design. 
 
91  Terms of compulsory licence 
 (1) This section applies if a court makes an order granting a licence under section 90.  (2) The order must direct that the licence: 
 (a) does not give the licensee any ex clusive rights in the design; and 
 (b) is to be assignable only in connection with an enterprise or goodwill in connection 
with which the licence is used; 
and may direct that the licence is to be gran ted on any other terms specified in the order. 
 (3) The order operates, without prejudice to any other method of enforcement, as if it were 
embodied in a deed granting a licence and execu ted by the registered owner of the design 
and all other necessary parties. 
 (4) The applicant is to pay the registered owner of the design: 
 (a) such amount as is agreed between the applicant and the registered owner of the 
design; or 
 (b) if paragraph (a) does not apply—such amount as is determined by a prescribed 
court to be just and reasonable having rega rd to the economic value of the licence. 
 (5) The registered owner of the design or a prescribed court may revoke the licence if: 
 (a) the registered owner of the design and the licensee are agreed, or the court on 
application made by either party finds, that the circumstances that justified the 
grant of the licence have ceased to ex ist and are unlikely to recur; and 
 (b) the legitimate interests of the licensee are not likely to be adversely affected by the 
revocation. 
  IP/N/1/AUS/D/5 
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  92  Revocation of registration after grant of compulsory licence 
 (1) If a licence is granted under section 90, an  interested person may apply to a prescribed 
court, after the end of the prescribed period,  for an order revoking the registration of the 
design. 
 (2) After hearing the application, the court may make the order if it is satisfied that: 
 (a) the reasonable requirements of the public with respect to the design have not been 
satisfied; and 
 (b) the registered owner of the design has given no satisfactory reason for failing to 
exercise the exclusive rights in the design. 
 Part 4—Revocation of registration by court in other circumstances    93  Revocation of registration in other circumstances 
 (1) A person may apply to a prescribed court for an order revoking the registration of a 
design. 
 (2) An application under subsection (1) may be made only after the design has been 
examined under Chapter 5 and a certificat e of examination has been issued. 
 (3) The grounds on which a court may revoke the registration of the design are: 
 (a) that the design is not a registrable design; or 
 (b) that one or more of the original registered owners was not an entitled person in 
relation to the design when the design was first registered; or 
 (c) that each of the original registered ow ners was an entitled pers on in relation to the 
design when the design was first registered, but another person or persons were entitled persons in relation to the design at that time; or 
 (d) that the registration of the design was obtained by fraud, false suggestion or 
misrepresentation; or 
 (e) that the design is a corresponding design  to an artistic work, and copyright in the 
artistic work has ceased. 
 (4) In this section: 
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. 
 Chapter 8—The Crown  Part 1—Simplified outline of Chapter 8 
   
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. IP/N/1/AUS/D/5 
Page 48  
 
  Part 4 enables the Registrar to prohibit or r estrict 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. 
 
 Part 2—Use by the Crown 
   
95  Meaning of terms 
 (1) In this Part, a reference to the use of a design, or of a product in relation to which a 
design is registered, which embodies the design,  is a reference to the exercise of the 
exclusive rights in the design mentioned in paragraphs 10(1)(a) to (e). 
 (2) In this Part: 
State includes the following: 
 (a) the Australian Capital Territory, the Northern Territory and Norfolk Island; 
 (b) an authority of the Australian Capital Territory, the Northern Territory or Norfolk 
Island. 
 
96  Use of design by the Commonwealth or a State 
 (1) At any time after a design application discl osing a design has been filed or a design has 
been registered, the Commonwealth or a State, or a person authorised in writing by the 
Commonwealth or a State, may use the desi gn for the services of the Commonwealth or 
State. 
 (2) An authority under subsection (1): 
 (a) may be given either before or after the registration of the design; and 
 (b) may relate to, and authorise retrosp ectively, acts done after the filing of the 
application and before the giving of the authority; and 
 (c) may be given to a person even if that pe rson is directly or indirectly authorised by 
the entitled person in relation to the design, or the registered owner of the design, 
as the case requires, to use the design. 
 (3) Subject to section 105, a design is taken for the purposes of this Part to be used for the 
services of the Commonwealth or a State if the use of the design is necessary for the 
proper provision of those services within Australia. 
 
97  Applicants, entitled persons and registered owners to be informed of use 
 (1) As soon as practicable after the use of a design under section 96, the Commonwealth or a 
State must inform the following persons of that use: 
 (a) in the case of a design that has not yet been registered—each applicant for 
registration of the design and each entitled person in relation to the design; 
 (b) in the case of a registered design—the registered owner. 
 (2) The Commonwealth or a State must also give to each person mentioned in 
paragraph (1)(a) or (b) such information a bout the use of the design as the person from 
time to time reasonably requires, unless it app ears to the Commonwealth or State that it 
would be contrary to the public interest to do so. 
  IP/N/1/AUS/D/5 
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  98  Terms of use 
 (1) The terms of use of a design: 
 (a) are as agreed on, whether before, during or after that use, between the 
Commonwealth or State and the entitled pe rson in relation to the design or the 
registered owner of the design, as the case requires; or 
 (b) in absence of agreement, are as determined by a prescribed court. 
 (2) A prescribed court may, in determining the terms of use, take into consideration 
compensation that a person interested in the design has received, directly or indirectly, 
from the Commonwealth or State in respect of the design. 
 (3) A person may not apply to a prescribed c ourt for a determination under subsection (1) in 
relation to a design unless a certificate of examin ation has been issued in relation to the 
design. 
 
99  Previous agreements inoperative 
 (1) This section applies to an agreement or li cence (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. 
 (2) Such an agreement or licence is inope rative with respect to the use, after the 
commencement of this section, of the desi gn 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 
 (1) The registered owner of a design who c onsiders that the design has been used under 
section 96 may apply to a prescribed court for a declaration to that effect. 
 (2) An application under subsection (1) may not be made by the registered owner unless a 
certificate of examination has been issued. 
 (3) In a proceeding under subsection (1), th e Commonwealth or the State concerned is the 
defendant and may, by way of  counter-claim, apply for the revocation of the registration 
of the design under section 93. 
 102  Use of design to cease under court order 
 (1) A prescribed court may, on the application of  the registered owner, declare that the use of 
a registered design by the Commonwealth or State is not, or is no longer, necessary for 
the proper provision of services of the Commonwealth or State. 
 (2) The court may make a declaration under sub section (1) if it is satisfied that in all the 
circumstances of the case, it is fair and reasonable to do so. 
 (3) The court may further order that the Co mmonwealth or the State is to cease to use the 
design: 
 (a) on and from the day specified in the order; and IP/N/1/AUS/D/5 
Page 50  
 
   (b) subject to any conditions specified in the order. 
 (4) In making an order under subsection (3), the court is to ensure that the legitimate 
interests of the Commonwealth or State are not adversely affected by the order. 
 (5) A person may not apply to a prescribed c ourt for a declaration under subsection (1) in 
relation to a design unless a certificate of examin ation has been issued in relation to the 
design. 
 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. 
 
105  Supply of products by the Commonwealth to foreign countries 
 (1) This section applies if: 
 (a) the Commonwealth has made an agreement with a foreign country to supply to the 
country a product in relation to which a design is registered, which embodies the design; and 
 (b) the product is required for the defence of the country. 
 (2) The use of the product by the Commonwealth, or by a person authorised in writing by the 
Commonwealth, for the purposes of supplying the product is taken, for the purposes of 
this Part, to be a use of the product by the Commonwealth for the services of the 
Commonwealth. 
 (3) The Commonwealth or the authorised person may: 
 (a) sell the product to the country under the agreement; and  (b) sell to any person any of the products that are not required for the purpose for 
which they were made. 
 
Part 3—Acquisition by and assignments to the Crown    106  Acquisition of design by the Commonwealth 
 (1) The Governor-General may direct that a design disclosed in a design application, or a 
registered design, be acquired by the Commonwealth. 
 (2) When a direction is given, all rights in re spect of the design are, by force of this section, 
transferred to and vested in the Commonwealth. 
 (3) Notice of the acquisition must be publishe d in the prescribed manner and given to the 
following: 
 (a) in the case of a design that has not yet been registered—each applicant for 
registration of the design and each entitled person in relation to the design; 
 (b) in the case of a registered design—the registered owner.  IP/N/1/AUS/D/5 
 Page 51 
 
 
   (4) The Commonwealth must pay: 
 (a) each entitled person in relation to the desi gn or the registered owner of the design, 
as the case requires; and 
 (b) all other persons appearing in the Regi ster as having an 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 c ourt for a determination under subsection (4) in 
relation to a design unless a certificate of examin ation has been issued in relation to the 
design. 
 107  Assignment of design to the Commonwealth 
 (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. 
 (2) The assignment and all covenants and agreements contained in the assignment are: 
 (a) valid and effectual even if valuable  consideration has not been given; and 
 (b) may be enforced by action or other a ppropriate proceeding in the name of the 
Minister. 
 Part 4—Prohibition orders    108  Prohibition of publication of information about designs 
 (1) The Registrar may, if it appears to the Regi strar to be necessary or expedient to do so in 
the interests of the defence of the Commonwea lth, by written order, prohibit or restrict 
the publication of information about the subject matter of a design application. 
 (2) The Registrar is subject to any directio ns by the Minister in making an order under 
subsection (1). 
 (3) If an order is in force under subsection (1) in relation to an application, the application 
may be dealt with under this Act, but a design disclosed in the application must not be 
registered or published. 
 (4) If: 
 (a) an order under subsection (1) has been revoked; and  (b) at the date of the revocation of the order, the design would, but for the operation of 
subsection (3), have been registered or published; 
the design must be registered or pu blished 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. 
 
109  Publication of information about designs 
 (1) A person commits an offence if: 
 (a) the person is subject to an order under subsection 108(1); and  (b) the person engages in conduct; and IP/N/1/AUS/D/5 
Page 52  
 
   (c) the person’s conduct contravenes the order. 
Maximum penalty: Imprisonment for 2 years. 
 (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: 
 (a) to do an act; or 
 (b) omit to do an act. 
 
Chapter 9—The Register 
   110  Simplified outline 
  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 Re gister and enter particular matters in it. 
The Register is to be available for public inspection. 
The Register can be amended in specified circumstances. 
 
 
111  Registrar must keep Register 
 (1) The Registrar must keep at the Designs Office a Register of Designs. 
 (2) The following particulars must be entered in the Register in respect of a registered 
design: 
 (a) the product or products in relati on to which the design is registered; 
 (b) the name of each person who is en titled to be entered on the Register as the 
registered owner of the design; 
 (c) representations of the design; 
 (d) whether or not a certificate of examinati on has been issued in respect of the design; 
 (e) any other particulars prescribed by the regulations. 
 (3) All documents filed in connection with the registration of particulars mentioned in 
subsection (2) must be available for insp ection at the Designs Office by any person 
during the hours when it is open for business. 
 
112  Register may be kept by computer 
 (1) The Register may be kept wholly or partly by use of a computer.  (2) If the Register is kept wholly or partly by use of a computer: 
 (a) references in this Act to an entry in th e Register include references to a record of 
particulars kept by use of the computer and comprising the Register or part of the 
Register; and  IP/N/1/AUS/D/5 
 Page 53 
 
 
   (b) references in this Act to particulars be ing registered, or entered in the Register, 
include references to the keeping of the r ecord of those particulars as part of the 
Register by use of the computer; and 
 (c) references in this Act to the amendment,  alteration or rectification of the Register 
include references to the amendment, altera tion or rectification of the record of 
particulars kept by use of the computer and comprising the Register or part of the Register. 
 113  Inspection of Register 
 (1) The Register is to be available for insp ection at the Designs Office by any person at the 
times prescribed by the regulations. 
 (2) If the Register is kept by use of a comput er, subsection (1) is taken to be complied with 
by giving members of the public access to a co mputer terminal that they can use to 
inspect particulars that are kept by the use of a computer. 
 114  Amendments of Register to record changes of ownership 
 (1) The registered owner of a registered desi gn who assigns an interest in the design, or an 
assignee of an interest in a design, may ask th e Registrar to record the assignment of the 
interest in the design. 
 (2) A person who becomes the owner of a registered design by devolution by will or by 
operation of law may ask the Registrar to r ecord the person’s interest in the design. 
 (3) If a request is made under s ubsection (1), the Registrar must: 
 (a) notify each other registered owne r of the design of the request; and 
 (b) record the assignment; 
unless any of the other registered owners advi ses the Registrar, in writing and within the 
period prescribed by the regulations, that the other registered owner does not consent to 
the assignment. 
 (4) A request under subsection (1) or (2) must  be made in accordance with the regulations. 
 
115  Amendments of Register made to  give effect to certain decisions 
  If: 
 (a) the Registrar decides to revoke the re gistration of a design under section 50, 52 or 
68; or 
 (b) a court makes an order revoking the registration of a design; 
the Registrar must make an entry in the Regist er stating that the registration of the design 
has been revoked and that the design is taken never to have been registered. 
 116  Reissue of certificates 
  After amending the Register, the Registrar must: 
 (a) issue to the registered owner of the design a new certificate of registration; and 
 (b) publish a notice in the manner prescrib ed by the regulations, specifying the 
amendments to the Register; and 
 (c) if appropriate, publish the design. 
 IP/N/1/AUS/D/5 
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  117  Trusts not to be entered in Register 
  Notice of a trust, whether express, implied or constructive, must not be received by the 
Registrar or entered in the Register. 
 118  Evidentiary provision 
 (1) The Register is prima facie evidence of any particulars entered in it. 
 (2) If the Register is wholly or partly kept by use of a computer, a document issued by the 
Registrar producing in writing all or any of the particulars comprising the Register, or 
that part of it, as the case may be, is admissible in any proceedings as prima facie evidence of those particulars. 
 (3) A signed copy of, or signed extract from, th e Register is admissible in any proceedings as 
if it were the original. 
 (4) In this section: 
signed  means signed by or on behalf of the Registrar. 
 
119  Admissibility of unregistered interests 
  A document or instrument in respect of whic h 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: 
 (a) in the case of an application under section 120; 
 (b) if the court concerned directs that the document or instrument is admissible. 
 
120  Rectification of Register 
 (1) A person aggrieved by: 
 (a) the omission of an entry from the Register; or 
 (b) an entry wrongly made in the Register; or  (c) an error or defect in an entry in the Register; or  (d) an entry wrongly existing in the Register; 
may apply to a prescribed court for an order to rectify the Register. 
 (2) On hearing an application under subsection (1), the court may: 
 (a) decide any question that it is necessary or expedient to decide in connection with 
the rectification of the Register; and 
 (b) make an order it thinks fit for the rectification of the Register. 
 (3) The Registrar must be given notice of an  application made under subsection (1), and is 
entitled to appear and be heard in proceed ings in relation to the application. 
 (4) If the court makes an order under this section: 
 (a) the court must give a copy of the order to the Registrar; and  (b) the Registrar must give effect to the order. 
 (5) A person may not apply to a prescribed cour t under subsection (1) for rectification of the 
Register in relation to a design unless a certificate of examination has been issued in relation to the design.  IP/N/1/AUS/D/5 
 Page 55 
 
 
   
Chapter 10—Administration      121  Simplified outline 
  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. 
 
122  Registrar 
 (1) There is to be a Registrar of Designs. 
 (2) The Registrar has such powers and functi ons as are conferred by this Act or any other 
Act. 
 123  Deputy Registrars 
 (1) There is to be at least one Deputy Registrar of Designs. 
 (2) Subject to any direction by the Registrar, a Deputy Registrar has all the powers and 
functions of the Registrar under this Act or any other Act, except the Registrar’s powers 
of delegation under section 124. 
 (3) A power or function of the Registrar under th is Act or any other Act, when exercised or 
performed by a Deputy Registrar, is to be ta ken for the purposes of this Act or any other 
Act to have been exercised or performed by the Registrar. 
 (4) The exercise of a power, or function, of the Registrar under this Act or any other Act by 
a Deputy Registrar does not prevent the exerci se of the power, or the performance of the 
function, by the Registrar. 
 (5) If the exercise of a power or function by the Registrar, or the operation of a provision of 
this Act or any other Act, depends on the opini on, belief or state of mind of the Registrar 
in relation to a matter: 
 (a) that power or function may be exercised by a Deputy Registrar upon the opinion, 
belief or state of mind of the Deputy Regi strar in relation to that matter; and 
 (b) that provision may operate upon the opi nion, belief or state of mind of a Deputy 
Registrar in relation to that matter. 
 
124  Delegation by Registrar 
 (1) The Registrar may, by written instrument si gned by the Registrar, delegate all or any of 
the Registrar’s powers or functions under th is Act or any other Act to a prescribed 
employee, or a prescribed class of employees. 
 (2) A delegate must, if so required by the instrument of delegation, exercise or perform a 
delegated power or function under the directi on or supervision of the Registrar or an 
employee specified in the instrument. 
 IP/N/1/AUS/D/5 
Page 56  
 
  125  Designs Office 
 (1) There is to be a Designs Office. 
 (2) There is to be a sub-office of the Designs Office in every State. 
 126  Seal of Designs Office 
 (1) There is to be a seal of the Designs Office and impressions of the seal must be judicially 
noticed. 
 (2) The seal of the Designs Office may be kept and used in electronic form. 
 
127  Registrar’s Powers 
 (1) The Registrar may, for the purposes of this Act: 
 (a) summon witnesses; and  (b) receive written or oral evidence on oath or affirmation; and  (c) require the production of documents or articles; and  (d) award costs against a party to proceedings before him or her. 
 (2) The Registrar may protect the confidential  status of documents or articles produced in 
confidence under paragraph (1)(c). 
 
128  Recovery of costs 
  Costs awarded by the Registrar against a party are recoverable as a debt. 
 
Chapter 11—Miscellaneous  
Part 1—Simplified outline of Chapter 11 
   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 5 gives the Registrar the power to ex tend the time within which specified things 
must be done. 
Part 6 sets out regulation-making power s and other provisions dealing with 
miscellaneous matters. 
  IP/N/1/AUS/D/5 
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  Part 2—Fees 
   130  Fees 
 (1) The regulations may prescribe the fees to be paid for the purposes of this Act or the 
regulations. 
 (2) Without limiting subsection (1), the regulations may prescribe different fees, in respect 
of the doing of an act or the filing of a do cument, according to when the act is done or 
the document is filed. 
 (3) The prescribed fees are payable in accordance with the regulations. 
 (4) The regulations may provide for the con sequences of failing to pay a fee in accordance 
with the regulations. 
 (5) In particular, the regulations may provi de that, for the purposes of this Act or the 
regulations: 
 (a) an act is not to be done, or is taken not to have been done, if the fee for doing the 
act is not paid in accordance with the regulations; or 
 (b) a document is not filed, or is taken not to have been filed, if the fee for filing the 
document is not paid in accordance with the regulations; or 
 (c) an application for registration of a design lapses, or is taken to have lapsed, if a fee 
relating to the application is not pa id in accordance with the regulations. 
 (6) Subsection (5) does not limit subsection (4). 
 
Part 3—Offences    
131  False entries in Register 
 (1) A person commits an offence if: 
 (a) the person makes an entry, or causes an  entry to be made, in the Register; and 
 (b) the person knows, or is reckless as to whether, the entry is false. 
Maximum penalty: Imprisonment for 12 months. 
 (2) A person commits an offence if: 
 (a) the person tenders a document in evidence; and  (b) the person knows that, or is reckless as to whether, the document falsely purports to 
be a copy of or extract fro m an entry in the Register. 
Maximum penalty: Imprisonment for 12 months. 
 
132  False representation that a design is registered 
 (1) A person commits an offence if: 
 (a) the person represents that a design is registered; and 
 (b) the person knows, or is reckless as to whether, the representation is false. 
Maximum penalty: 60 penalty units. 
 (2) A person commits an offence if the person: IP/N/1/AUS/D/5 
Page 58  
 
   (a) represents that the person, or another pers on, is the registered owner of a registered 
design; and 
 (b) knows that the design is not registered, or is reckless as to whether  the 
representation is false. 
Maximum penalty: 60 penalty units. 
 (3) A person commits an offence if: 
 (a) the person sells a product which embodies a design; and 
 (b) the product has stamped, engraved, impressed upon or otherwise applied to it the 
words “registered in Australia”, “design re gistered in Australia”, or other words, 
expressing or implying that the design is registered; and 
 (c) the person knows the design is not regi stered, or is reckless as to whether the 
design is registered. 
Maximum penalty: 60 penalty units. 
 (4) Strict liability applies to paragraph (3)(b). 
 
133  False representations about the Designs Office 
 (1) A person commits an offence if: 
 (a) the person:  (i) places, or allows to be placed, wo rds on the building in which the person’s 
office or business is situated; or 
 (ii) uses words when advertising the person’s office or business; or 
 (iii) places words on a document, as a description of the person’s office or 
business; or 
 (iv) otherwise uses words in connection with the person’s office or business; and 
 (b) the words are “Office for registering desi gns”, or other words, that would lead a 
reasonable person to believe that the office or business is, or is officially connected 
with, the Designs Office; and 
 (c) the person knows or is reckless as to whether the person’s office  or business is, or 
is connected with, the Designs Office . 
Maximum penalty: 30 penalty units. 
 (2) Strict liability applies to paragraph (1)(b). 
 
134  Failure to comply with requirements of Registrar 
 (1) A person commits an offence if: 
 (a) the person is subject to a requirement to:  (i) appear as a witness before the Registrar, having been offered reasonable 
expenses to appear; or 
 (ii) answer a question put by the Registrar; or 
 (iii) produce a document or article to the Registrar; or  (iv) be sworn or make an affirmation in proceedings before the Registrar; and 
 (b) the person engages in conduct; and  (c) the person knows or is reckless as to whether the person’s conduct contravenes the 
requirement.  IP/N/1/AUS/D/5 
 Page 59 
 
 
  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 rela tion to the matter in s ubsection (2) (see subsection 
13.3(3) of the Criminal Code ). 
 (3) A person is excused from the requirement s 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: 
 (a) do an act; or 
 (b) omit to do an act. 
 
135  Officers not to traffic etc. in designs 
 (1) The Registrar, a Deputy Registrar or an employee commits an offence if he or she sells, 
acquires or traffics in: 
 (a) a registered design, whether granted in Australia or anywhere else; or 
 (b) a right to, or licence under, a registered design, whether granted in Australia or 
anywhere else. 
Maximum penalty: 60 penalty units. 
 (2) A purchase, sale, acquisition, assignment or transfer made or entered into in 
contravention of this section is void. 
 (3) This section does not apply to the registered owner of the design or to an acquisition by 
devolution by will or by operation of law. 
Note: A defendant bears an evidential burden in relation to the matter in subsection (3) (see 
subsection 13.3(3) of the Criminal Code ). 
 
Part 4—Review of the Registrar’s decisions    136  Review by Administrative Appeals Tribunal 
 (1) A person may apply to the Administrative Appeals Tribunal for review of a decision of 
the Registrar: 
 (a) to refuse an application that does not  meet the minimum filing requirements under 
subsection 24(2); or 
 (b) to make or refuse to make a determination under section 29; or  (c) to refuse an application under section 30 for a design application to proceed in the 
person’s name; or 
 (d) to refuse to register a design under section 43; or 
 (e) to refuse to publish a design under section 59; or  (f) to prohibit or restrict the publication of information about the subject matter of a 
design application under section 108; or 
 (g) to refuse an application under section 137 for an extension of time. IP/N/1/AUS/D/5 
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   (2) If a decision mentioned in subsection (1) is made and a written notice of the decision is 
given to a person whose interests are affected  by the decision, the notice must include a 
statement to the effect that an applicati on may be made to the Administrative Appeals 
Tribunal under the Administrative Appeals Tribunal Act 1975  for review of the decision. 
 (3) Failure to comply with subsection (2) in relation to a decision does not affect the validity 
of the decision. 
 (4) In this section: 
decision  has the same meaning as in the Administrative Appeals Tribunal Act 1975 . 
 
Part 5—Extensions of time 
   137  Extensions of time 
 (1) The Registrar must extend the time for doing a relevant act that is required to be done 
within a certain time if the act is not, or ca nnot be, done within that time because of an 
error or omission by: 
 (a) the Registrar or a Deputy Registrar; or 
 (b) a person employed in the Designs Office; or  (c) a person providing, or pr oposing to provide, services for the benefit of the Designs 
Office. 
 (2) The Registrar may, on application by  a person concerned in accordance with the 
regulations, extend the time for doing a relevant act if, because of: 
 (a) an error or omission by the person, or by the person’s agent; or 
 (b) circumstances beyond the control of the person; 
the relevant act that is required to be done within a certain time is not, or cannot be, done 
within that time. 
 (3) The time for doing a relevant act may be ex tended, whether before or after that time has 
expired. 
 (4) The Registrar must advertise an application for an extension of time of more than 3 
months in the manner prescribed by the regulations. 
 (5) Subject to subsection (6), a person ma y, as prescribed, oppose the granting of the 
application. 
 (6) If the Registrar is satisfied that an appli cation under subsection (2) would not be granted, 
even in the absence of opposition under subsection (5): 
 (a) the Registrar need not advertise the a pplication in accordance with subsection (4); 
and 
 (b) the application cannot be opposed; and 
 (c) the Registrar must refuse the application. 
 (7) In this section: 
relevant act  means an action (other than a prescribed action) in relation to: 
 (a) a registered design; or 
 (b) an application for registration or publication of a design; or  (c) any proceedings under this Ac t (other than court proceedings).  IP/N/1/AUS/D/5 
 Page 61 
 
 
   
138  Consequences of extension 
 (1) If: 
 (a) a design application lapses, or the registration of a design ceases to be in force 
because of a failure to do a relevant act (within the meaning of section 137); and 
 (b) the time for doing the act is extended; 
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: 
 (a) advise the applicant or registered owner that the application or registration has been 
restored; and 
 (b) publish a notice in the manner prescribed by  the regulations that the application or 
registration has been restored. 
 
139  Protection of third parties 
 (1) This section applies if the registration of  a design ceases to be in force because of a 
failure to do a relevant act (within the me aning of section 137) and is subsequently 
restored under section 138. 
 (2) A person who took definite steps to use the design commercially after the registration of 
the design ceased to be in force but befo re the registration is restored may: 
 (a) continue to use the design after the registration is restored; or 
 (b) sell the right to use the design to another person. 
 (3) However, the person must not grant a licence to another person to use the design. 
 (4) A person who purchases a right under paragr aph (2)(b) must not sell to another person 
the right to use the design or grant a li cence to another person to use the design. 
 (5) A person who continues to use a design b ecause of paragraph (2)(a) or used the design 
after purchasing it as mentioned in subsection (4 ) does not infringe the registered design. 
 140  Infringement proceedings 
  Infringement proceedings cannot be brought in respect of an infringement committed: 
 (a) between the day on which the registra tion of the design ceases to be in force and 
the day on which it is restored; or 
 (b) between the day on which the design ap plication lapses and the day on which it is 
restored. 
 
Part 6—Other 
   
141  Powers of agents 
  An agent may do any act in connection with the registration of designs, on behalf of any 
other person. 
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  142  Right of lien of registered patent atto rney and registered tr ade marks attorney 
  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 solic itor has in relation to the documents and 
property of a client. 
 
143  Revocation of registration does not affect co urt decisions and things done under contracts 
        before revocation 
  The revocation of the registration of a design does not affect the operation of a court 
decision made before the revocation, or th ings done under a contract before the 
revocation. 
 144  Filing of documents 
  A document may be filed: 
 (a) by any means determined by the Registrar; or  (b) by delivering the document to a sub-offi ce of the Designs Office either personally 
or by post or by any other prescribed means. 
 
145  Service of documents 
  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. 
 
146  Death of applicant before application determined 
  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. 
 
147  Death of person after design registered 
 (1) This section applies if, at any time after a design is registered, the Registrar is satisfied 
that the registered owner had died (or, in  the case of a body corporate, had ceased to 
exist) before the design was registered. 
 (2) The Registrar may amend the Register by substituting for the name of the registered 
owner the name of the person who should ha ve been entered in the Register as the 
registered owner. 
 (3) An amendment by the Registrar under this sec tion has effect, and is to be taken always to 
have had effect, accordingly. 
 
148  Exercise of discretionary power by Registrar 
  The Registrar must not exercise a discretionary power under this Act adversely to a 
person without giving that person an opportunity to be heard. 
 
149  Regulations 
 (1) The Governor-General may make regulations prescribing matters: 
 (a) required or permitted to be prescribed; and  IP/N/1/AUS/D/5 
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   (b) necessary or convenient to be prescribed for carrying out or giving effect to this 
Act; and 
 (c) necessary or convenient for the conduct of any business relating to the Designs 
Office. 
 (2) Without limiting subsection (1), that sub section includes the power to make regulations: 
 (a) requiring persons to give statutory declar ations in relation to applications under the 
Act or regulations, or in relation to pro ceedings under the Act (other than court 
proceedings); and 
 (b) making provision for and in relation to the making of a declaration, or the doing of 
an act, under this Act on behalf of a person who, because of infancy or physical or 
mental disability, is unable to make the declaration or do the act; and 
 (c) providing for the refund, in the whole or part of a fee paid under the Act; and 
 (d) providing for the waiver, in whole or part, of a fee that would otherwise be payable 
under the Act; and 
 (e) making provision for and in relation to the amendment of an entry in the Register 
to correct a clerical error or an obvious  mistake, or for any other purpose; and 
 (f) empowering the Registrar to require a person to inform the Registrar, within the 
period prescribed by the regulations, whether or not the person wishes to be heard 
for the purposes of a provision of the Act; and 
 (g) empowering the Registrar to require a person who wishes to be heard for the 
purposes of a provision of the Act to appear on a day, and at a place and time, 
specified by the Registrar; and 
 (h) providing for the contents of design appl ications in which one or more designs are 
disclosed, including, but not limited to, requirements as to common ownership of the designs; and 
 (i) empowering the Registrar to direct an applicant for registration or publication of a 
design to do such things as are necessary to ensure that the application is in 
accordance with the requirements of the regulations for filing and: 
 (i) providing for the lapsing of the application if such a direction is not complied 
with within the period specified in the regulations; and 
 (ii) providing for the restoration of an application that has so lapsed; and 
 (j) providing for appeals against decisions of the Registrar made under the regulations; 
and 
 (k) making provision for and in relation to the practice and procedure of prescribed 
courts in proceedings under this Act, including provision prescribing the time 
within which any proceeding may be st arted or anything else may be done, and 
providing for the extension of any such time; and 
 (l) making transitional or consequential provisions as necessary or convenient because 
of the repeal of the Designs Act 1906  and the enactment of this Act; and 
 (m) provide for regulations under the Designs Act 1906  to continue to have effect (with 
any prescribed alterations) for specified purposes of this Act; and 
 (n) providing for things to be done for th e purposes of this Act or the regulations by 
means of electronic equipment or communication; and 
 (o) empowering the Registrar to prepare, publish and sell such documents relating to 
designs as the Registrar thinks fit; and 
 (p) making provision for and in relation to the destruction of documents. IP/N/1/AUS/D/5 
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   (3) Despite the repeal of the Designs Act 1906  by this Act, regulations made under 
paragraph (2)(l) may provide for the continue d 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  
   150  Repeal 
  The Designs Act 1906 is repealed. 
 Part 2—Transitional and saving provisions    151  Application of this Act to certain designs 
 (1) This section applies to the following designs: 
 (a) a design registered under the old Act immediately before the commencing day;  (b) a design registered after the commencing day as a result of a design application to 
which the old Act continued to apply because of section 153. 
 (2) The design: 
 (a) is taken to be registered under this Act: 
 (i) in the case of a design mentioned in paragraph (1)(a)—on and from the 
commencing day; and 
 (ii) in the case of a design mentioned in paragraph (1)(b)—on and from the day on 
which the design was registered; and 
 (b) is taken to have been examined by the Registrar under Part 3 of Chapter 5 and a 
certificate of examination is taken to have been issued under section 67. 
 (3) However, despite subsection (2): 
 (a) the old Act continues to apply for the purposes of determining the validity of the 
registration of the design; and 
 (b) this Act does not apply for the pur poses of determining the validity of the 
registration of the design; and 
 (c) the design must not be examined under Chapter 5. 
 152  Term of registration of certain designs 
  Despite section 151: 
 (a) the term of registration of a design to which that section applies ceases to be in 
force on the day on which it would have ceas ed to be in force under the old Act if 
the old Act had not been repealed; and 
 (b) section 27A of the old Act continues to apply to the design as if the old Act had not 
been repealed. 
 
153  Applications made before commencing day 
 (1) The old Act continues to apply to an application made under the old Act before the 
commencing day as if the old Act had not been repealed, unless a conversion request is 
made under section 159 in respect of the application.  IP/N/1/AUS/D/5 
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   (2) However, an application for an extension of time in relation to an application mentioned 
in subsection (1) must be made under section 137 of this Act. 
 (3) If, after dealing with an application under th e old Act, the Registrar is required to register 
the design to which the application relates, th e Registrar must comply with section 45 of 
this Act in relation to the registration of the design. 
 
154  Other applications and proceedings 
 (1) This Act applies, on and after the commenci ng day, to any application, request, action or 
proceeding made or started under the old Act and not finally dealt with under that Act 
before that day as if the application, request, action or proceeding had been made or 
started under a corresponding provision of this Act. 
 (2) Subsection (1) does not apply to: 
 (a) an application to which the old Act continues to apply under section 153; or 
 (b) a proceeding to which the old Act continues to apply under section 155. 
Note: Section 152 deals with the applica tion of section 27A of the old Act. 
 
155  Pending proceedings 
 (1) If proceedings arising from an applicati on to a court under the old Act were pending 
immediately before the commencing day, the ma tter is to be decided as if the old Act had 
not been repealed. 
 (2) However, any order made by a court in relati on to rectification must relate to the Register 
under this Act. 
 156  Infringement under old Act 
 (1) This section applies to the following designs: 
 (a) a design that was at any time registered under the old Act and had not been 
expunged from the Register under the old Act (whether or not the design is a 
design to which section 151 applies); and 
 (b) a design that was registered after the commencing day as a result of an application 
to which the old Act applied because of section 153. 
 (2) If: 
 (a) either of the following applies: 
 (i) a person engages, before the commencing day, in conduct that infringed the 
monopoly in the design under the old Act; 
 (ii) a person engages, after the commenc ing day, in conduct that would have 
infringed the monopoly in the design under the old Act if that Act were still in force; and 
 (b) an action relating to that infringement was not pending immediately before the 
commencing day;  
an action may be brought under this Act for infringement of the design. 
 (3) However, in an action under subsection (2): 
 (a) the old Act continues to apply for the purposes of determining whether the person’s 
conduct infringed the monopoly in the design; and IP/N/1/AUS/D/5 
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   (b) this Act does not apply for the pur poses of determining whether the person’s 
conduct infringed the monopoly in the design; and 
 (c) a person is not entitled to any injunctio n or other relief to which the person would 
not have been entitled under the old Act. 
 (4) Subsection (2) is subject to any law with  respect to the time period within which an 
action of a kind mentioned in that subsection may be started. 
 
157  Registrar and Deputy Registrar 
  A person who held office as the Registrar, or as a Deputy Registrar, under the old Act 
immediately before the commencing day con tinues to hold office as the Registrar or 
Deputy Registrar (as the case requires) under this Act on and after that day. 
 158  The Register 
  On and after the commencing day, the Regi ster within the meaning of the old Act is 
taken to be the Register within the meaning of this Act. 
 159  Conversion of transitional applications 
 (1) A person who has made a transitional a pplication may request that the transitional 
application be treated as a converted application. This is a conversion request . 
 (2) A conversion request must be: 
 (a) made before the end of the prescribed period; and 
 (b) in writing and filed; and  (c) made in accordance with any requirements prescribed by the regulations. 
 (3) If a conversion request is made in respect of a transitional application, nothing that has 
been done under the old Act in relation to the application before the request was made is 
taken to constitute an ex amination under Chapter 5. 
 (4) If a conversion request is made in respect of  a transitional application, the application is 
taken to be a converted application fro m the date of the conversion request. 
 
160  Effect of a converted application 
 (1) A converted application is taken to be an application made under this Act, subject to the 
modifications set out in this section. 
 (2) The filing date of a converted application is taken under section 26 of this Act to be the 
filing date of the transitional application. 
 (3) The priority date of a design disclosed in a converted application is taken under 
section 27 of this Act to be the same prio rity date as it had under the transitional 
application. 
 (4) A converted application is taken to meet  the minimum filing requirements mentioned in 
subsection 21(2) of this Act. 
 (5) A converted application is taken to in clude a request under section 35 of this Act for 
registration of each of the designs discl osed in the converted application.  IP/N/1/AUS/D/5 
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   (6) The term of registration of a design discl osed in a converted application is taken under 
section 46 of this Act to start from the date  of the conversion request under subsection 
159(1). 
 (7) An amendment requested under section 22B of the old Act in relation to a transitional 
application to which a converted applicati on relates is taken to be an amendment 
requested under section 28 of this Act. 
 (8) If: 
 (a) a converted application is amended unde r section 28 of this Act to exclude one or 
more of the designs disclosed in the converted application; and 
 (b) the applicant files a design application under section 23 of this Act in respect of 
one or more of the excluded designs; 
the term of registration of the excluded desi gns 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 subsec tion 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 
 (b) is not a lapsed application; and  (c) is not in relation to a design that h as been registered or refused registration. 
 
 
 
[Minister’s second reading speech made in— 
House of Representatives on 11 December 2002 
Senate on 4 December 2003 ] 
(271/03) 
 
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