An Act relating to designs, and for related purposes
Chapter 1—Introductory
Part 1—Preliminary
1
Short title [see
Note 1]
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 time specified in column 2 of the table.
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Commencement
information
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Column 1
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Column 2
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Column 3
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Provision(s)
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Commencement
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Date/Details
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1. Sections 1 and 2 and anything in this Act not
elsewhere covered by this table
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The day on which this Act receives the Royal Assent
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17 December 2003
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2. Sections 3 to 161
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A single day to be fixed by Proclamation, subject to subsection (3)
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17 June 2004
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Note: This table relates only to the provisions of
this Act as originally passed by the Parliament and assented to. It will not be
expanded to deal with provisions inserted in this Act after assent.
(2) Column 3 of the table is for additional
information that is not part of this Act. This information may be included in
any 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 the
Commonwealth, of each of the States, of the Australian Capital Territory, of
the Northern 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
external Territory and the continental shelf.
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 work, has the same meaning as in Division 8 of Part III of
the Copyright Act 1968.
Deputy Registrar means a Deputy Registrar
appointed under section 123.
design, in relation to a product, means the
overall appearance of the product resulting from one or more visual features of
the product.
Note: See also section 8.
design application means an application filed
under section 21.
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.
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.
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 product for the purposes of this Act if any one or more of
the 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 shape
remains the same throughout, whether or not the dimensions of that shape vary
according 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
particular 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:
(i) the indefinite
dimension; and
(ii) if the product also
has a pattern that 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 registered 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
design 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
for the purposes of any trade or business; and
(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
Register 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 design
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
following paragraphs is entitled to be entered on the Register as the
registered owner of a design 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 deceased person mentioned in paragraph (a), (b), (c) or (d).
(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 reference to each of the registered owners of the design.
(4) No person other than a person mentioned
in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the
Register as the registered owner of a design that has not yet been registered.
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, undivided share in the exclusive rights in that design; and
(b) subject to paragraph (c),
each registered 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 exercise the exclusive rights in the design, or assign an interest in the
design, without 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
(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 substantially similar in overall impression
(1) A design is new unless it is identical to
a design that forms part of the prior art base for the design.
(2) A design is distinctive unless it is
substantially 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 predecessor 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
the 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.
(2) The design is not to be treated, for the
purposes 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
included, the sale, letting for hire or exposing for sale or hire of products
to which the design 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 consent 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
decide 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 designs than to differences between them.
(2) The person must also:
(a) have regard to the state of
development 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
design was disclosed did not include a statement of newness and distinctiveness
in respect of particular 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.
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 design application in relation to one or more designs.
If the design application meets the
minimum filing requirements, the design application is allocated a filing date,
and each design disclosed in it obtains a priority date.
Under Chapter 4, a person who has
filed a design application may, within the prescribed period, request
registration or publication of all or any of the designs disclosed in the
application.
Part 3 deals with amendment and
withdrawal of design applications.
Part 4 deals with the lapsing of
design applications.
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
regulations 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
entitled 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
more than one product, if each product belongs to the same Locarno Agreement
class.
(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
application has been registered, or published under section 57;
the applicant may file a design application under section 21
in respect of one or more of the excluded designs.
(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 respect
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 minimum
filing requirements mentioned in subsection 21(2), the Registrar must give a
written notice to the applicant stating:
(a) that the design application meets
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
manner prescribed by the regulations, the details prescribed by the regulations
in relation to each design application that meets the minimum filing
requirements.
Division 3—Filing date and priority date
26 Filing
date
A design application has the filing date
determined 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 filed, an application for protection in respect of the design had been made
in a Convention country in accordance with the regulations—the date prescribed
by the regulations; or
(c) if the regulations provide for a
different 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
application 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
inclusion 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
design disclosed in a design application, includes the substitution of one
representation for another representation.
(5) An appeal lies to the Federal Court
against a decision of the Registrar under this section.
29
Disputes between applicants
(1) This section applies if a dispute arises
between 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 Registrar thinks fit for either or both of the following purposes:
(a) enabling the application to
specify which of those persons is an entitled person in relation to a design
disclosed in the application;
(b) regulating the manner in which the
application is to proceed.
(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
that 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
the person would, if the design were registered, be entitled under an
assignment or agreement, or by operation of law, to:
(a) the registered design or an
interest in it; or
(b) an undivided share in the
registered 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
prescribed 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
application may withdraw the application by written notice filed within the
period prescribed by the regulations.
(2) A person who has filed a design application
in respect of more than one design may withdraw one or more of those designs
from the 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
application, 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 design disclosed in the application has not been made, in accordance with
Part 2 of Chapter 4, within the period prescribed by the regulations;
or
(b) the Registrar has given the
applicant a notice under section 41 or 57 in respect of the application,
and the applicant has not, 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 satisfied that the application meets the applicable requirements of Chapter 4.
(2) If the Registrar has, under section 137,
extended 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 registration or publication of all or any of the designs disclosed in a
design application.
The Registrar must register or publish
the designs under Part 3 or 4 if specified requirements are satisfied.
The Registrar must refuse to register
certain designs (see section 43).
Registration of a design is for a
maximum of 10 years (see Division 3 of Part 3).
The registration of a design may be
revoked on grounds relating to entitled persons (see Division 4 of Part 3).
Registered designs and associated
documents are open for public inspection (see Part 5).
Part 2—Requests for registration or publication
35
Request for registration or publication
(1) An applicant may request registration or
publication of one or more designs disclosed in a design application.
(2) The request must be:
(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
any 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 request
in respect of only some of the designs disclosed in the design application, 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 regulations, 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 request 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 design if
the Registrar is satisfied that:
(a) the design application satisfies
the formalities check specified in the regulations; and
(b) if the design is purportedly a
common design in relation to more than one product—that the design is a common
design 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
design relates belongs to the same Locarno Agreement class;
(b) if the design requested to be
registered 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 which
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 end 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 has
given a written notice to an applicant under section 41.
(2) If the applicant requests that the
Registrar 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 41(c)(ii), the Registrar must consider
the response.
(4) If, after considering the request or
response, 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 application under whichever of those sections applies.
(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 refuse 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
stating 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 design 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 within 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
registration to the applicant. The certificate must be in the form prescribed
by the regulations.
(4) The Registrar must publish a notice
stating 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
design may apply for renewal of the registration of the design.
(2) The application must be made within the
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 purposes of paragraph 65(3)(b), the Registrar is not satisfied as mentioned
in paragraph 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 ceases
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
which 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 would (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.
(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
design may offer to surrender the registration of the design.
(2) If there is more than one registered
owner 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
receives 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 surrender 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
relation 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
against 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
revocation under section 52 of the registration of a design.
(2) An application under subsection (1)
must:
(a) contain the information prescribed
by the regulations; and
(b) be made in the manner prescribed
by the regulations.
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
registration of a design under this section while relevant proceedings in
relation to that design are pending.
(7) An appeal lies to the Federal Court
against 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
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) that each original registered
owner of the design was an entitled person at the time the design was first
registered, but that another person or persons were also entitled persons at
that time.
(2) In addition to any other order 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 under subsection (2)
unless the registration of the design has been revoked.
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
application 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
against a decision of the Registrar to make, or refuse to make, a declaration
under subsection (2).
55
Priority date of design if an application filed by a person declared to be an
entitled person
One or more persons declared to be
entitled persons in relation to a design under section 52, 53 or 54 may
file an application in respect of the design under section 21, and if they
do so, the design has the same priority date as it had in the application in
which it was first disclosed.
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
the 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
mentioned in subsection (2), the Registrar must give a written notice to
the applicant stating:
(a) the matters in relation to which
the Registrar is not satisfied; and
(b) that the applicant may amend the
design application under section 28; and
(c) that the application will lapse at
the end 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 has
given a written notice to an applicant under subsection 57(3).
(2) If the applicant requests that the
Registrar 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
response, the Registrar is satisfied as mentioned in subsection 57(2), the
Registrar must publish the 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 application 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 and associated documents to be open
for public inspection
(1) After a design is registered or
published, 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
distinctiveness in respect of the design that was included in the application;
(d) any document filed in relation to
the design (whether before or after its registration or publication);
(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 documents 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
under paragraph 127(1)(c), if the Registrar is satisfied that the document, or
information in the document, should not be open for public inspection;
(d) a document that contains
information 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 disclosed
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 available 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
produced before the Registrar or in a legal proceeding unless the Registrar,
court, or any person having power to order inspection or production, directs
that the inspection or production be allowed.
(2) Notice of an application for the
production in legal proceedings of a document of the kind mentioned in subsection (1)
must be given 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 for registration or publication of the design to which the
documents relate.
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
examination of designs by the Registrar.
Designs may be examined after
registration on the request of any person or on the Registrar’s initiative.
In examining a design, the Registrar
must consider whether there are grounds for revoking the registration of the
design.
Part 2—Requests for examination
63
Examination of design
(1) The Registrar must examine a design that
has 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
initiative and at any time, examine a design that has at any time been a registered
design.
(3) If relevant proceedings in relation to a
design 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
registration has ceased because of the operation of subsection 48(1); and
(b) does not include a design whose
registration 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
relation to the newness and distinctiveness of the design.
(3) The Registrar must make available for
public inspection material contained in a request under this section in
relation to the newness and distinctiveness of the design to which the request
relates.
Part 3—Examination
65
What Registrar must do in examining a design
(1) If the Registrar receives a request to
examine a registered design, or decides to examine a registered design, the
Registrar must consider 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
procedures 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
satisfied, 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
request 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 with
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 design 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 and 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:
(a) that the design has been examined;
and
(b) if the Registrar is satisfied that
a ground of revocation could 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
mentioned 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 the 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
prescribed 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
against 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, and 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
registration of a design under this section while relevant proceedings in
relation to that design are pending.
(6) An appeal lies to the Federal Court
against a decision of the Registrar under this section.
Part 4—Material may be provided to Registrar
69
Certain material may be provided to Registrar
(1) A person may provide to the Registrar
material 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 provided 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
design 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 registered design if, without the appropriate authority, the person
deals in certain ways with a product that embodies the design, or a design that
is substantially similar to it.
Part 2 also provides that the
registered owner of a design may bring infringement proceedings. The defendant
may counter‑claim for rectification of the Register.
Various remedies are available,
including injunction, damages or an account of profits.
Part 3 deals with unjustified
threats of infringement proceedings.
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
(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 offers to sell, hire or otherwise dispose of, such a product; or
(d) uses such a product in any way for
the 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
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; 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
infringing 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 started
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 does
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 identical 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 identical 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:
(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 may 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.
74
Counter‑claims
A defendant in infringement proceedings
in respect of a registered design may apply, by way of counter‑claim in
the proceedings, for the revocation of the registration of the design under
section 93.
75
Remedies for infringement
(1) Without limiting the relief that a court
may 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 infringement, 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—that 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
damages 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
defendant was aware that the design was registered if the product embodying the
registered design 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 mentioned 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
(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 issued 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 the respondent would be entitled in separate infringement
proceedings against the applicant 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
infringement proceedings apply, with the necessary modifications, to a counter‑claim
under subsection (1).
(4) The provisions of this Act relating to proceedings
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 attorneys 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:
Chapter 7 deals with the
jurisdiction of courts.
Under Part 2, the Federal Court
is given jurisdiction in relation to matters arising under the Act. Other
prescribed courts have jurisdiction if the Act so provides.
Part 3 deals with the capacity of
a prescribed court to issue compulsory licences and to revoke the registration
of a design in certain circumstances.
Part 4 also deals with the
capacity of a prescribed court to revoke the registration of a design in
certain other circumstances.
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
hear 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
Act must not be brought in the Federal Court.
84
Jurisdiction of other prescribed courts
(1) Each prescribed court other than the
Federal 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 extent 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 relation 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 principal 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.
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
having 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 the 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
exercising 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 exercise 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 Court 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, that, 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
the hearing of an appeal to the Federal Court against a decision or direction
of the Registrar, even if the Registrar is not a party to the appeal.
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 registered 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
may make such an order if it is satisfied that:
(a) products embodying the design have
not been 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
exclusive 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 granted 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 executed 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 regard 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 exist and are unlikely to recur; and
(b) the legitimate interests of the
licensee are not likely to be adversely affected by the revocation.
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
certificate 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 owners was an entitled person 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.
Part 4 enables the Registrar to
prohibit or restrict the publication of information about a design application,
if to do so is necessary or expedient in the interests of the defence of the
Commonwealth.
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
disclosing 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 design 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
retrospectively, 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 person 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
about the use of the design as the person from time to time reasonably
requires, unless it appears to the Commonwealth or State that it would be
contrary to the public interest to do so.
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
person 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
court for a determination under subsection (1) in relation to a design
unless a certificate of examination has been issued in relation to the design.
99
Previous agreements inoperative
(1) This section applies to an agreement or
licence (whether made or given before or after the commencement of this section)
fixing the terms on which a person other than the Commonwealth or a State may
use a design.
(2) Such an agreement or licence is
inoperative with respect to the use, after the commencement of this section, of
the design under section 96, unless the agreement or licence has
been approved by the Minister or by the Attorney‑General of the State.
100
Infringement
Infringement proceedings do not lie in
relation to the use of a design under section 96.
101
Declaration by court
(1) The registered owner of a design who
considers 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),
the 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 subsection (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
Commonwealth or the State is to cease to use the design:
(a) on and from the day specified in
the order; and
(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
court for a declaration under subsection (1) in relation to a design
unless a certificate of examination 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
respect of the design are, by force of this section, transferred to and vested
in the Commonwealth.
(3) Notice of the acquisition must be
published 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.
(4) The Commonwealth must pay:
(a) each entitled person in relation
to the design or the registered owner of the design, as the case requires; and
(b) all other persons appearing in the
Register 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
court for a determination under subsection (4) in relation to a design
unless a certificate of examination has been issued in relation to the design.
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
appropriate 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
Registrar to be necessary or expedient to do so in the interests of the defence
of the Commonwealth, 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
directions 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 published within the
prescribed period.
(5) Nothing in this Act prevents disclosing
information about a design to an Agency or Commonwealth authority for the
purpose of obtaining advice as to whether an order under this section should be
made, amended or revoked.
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
(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 Register 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
relation to which the design is registered;
(b) the name of each person who is
entitled 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
examination 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 inspection 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 the Register include references to a record of particulars kept by use of
the computer and comprising the Register or part of the Register; and
(b) references in this Act to
particulars being registered, or entered in the Register, include references to
the keeping of the record 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, alteration 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
inspection at the Designs Office by any person at the times prescribed by the
regulations.
(2) If the Register is kept by use of a
computer, subsection (1) is taken to be complied with by giving members of
the public access to a computer 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
design who assigns an interest in the design, or an assignee of an interest in
a design, may ask the 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 record the person’s interest in the design.
(3) If a request is made under subsection (1),
the Registrar must:
(a) notify each other registered owner
of the design of the request; and
(b) record the assignment;
unless any of the other registered owners advises 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 registration 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 Register 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
prescribed by the regulations, specifying the amendments to the Register; and
(c) if appropriate, publish the
design.
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,
the 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
which an entry has not been made in the Register is not admissible in evidence
in a court as proof of title to a design, or an interest in a design, except as
follows:
(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 proceedings 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
court 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.
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
functions 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 this Act or any other Act, when exercised or performed by a Deputy
Registrar, is to be taken 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 exercise 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 opinion, 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 Registrar in relation to that matter; and
(b) that provision may operate upon
the opinion, 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
signed by the Registrar, delegate all or any of the Registrar’s powers or
functions under this Act, the regulations 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 direction or supervision of the Registrar or an employee specified in
the instrument.
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 4A lets an act be done after
the period otherwise provided for doing the act if that period ends on a day
when the Designs Office or a sub‑office is not open for business.
Part 5 gives the Registrar the
power to extend the time within which specified things must be done.
Part 6 sets out regulation‑making
powers and other provisions dealing with miscellaneous matters.
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 document, 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
consequences of failing to pay a fee in accordance with the regulations.
(5) In particular, the regulations may
provide 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 paid 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 from 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:
(a) represents that the person, or
another person, 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 registered in Australia”, or other words, expressing or implying that
the design is registered; and
(c) the person knows the design is not
registered, 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, words 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 designs”, 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.
Maximum penalty: 30 penalty units.
(2) Subsection (1) does not apply if the
person has a lawful excuse.
Note: A defendant bears an evidential burden in
relation to the matter in subsection (2) (see subsection 13.3(3) of the Criminal
Code).
(3) A person is excused from the requirements
of paragraph (1)(a) if those requirements might tend to incriminate the
person or expose the person to a penalty.
Note: A defendant bears an evidential burden in
relation to the matter in subsection (3) (see subsection 13.3(3) of the Criminal
Code).
(4) In this section:
engage in conduct means:
(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.
(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 application 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 4A—Doing act after end of period otherwise provided for doing
it
136A
Doing act when Designs Office reopens after end of period otherwise provided
for doing act
(1) If the last day of a period provided by
this Act (except this section) or the regulations for doing an act is a day
when the Designs Office, or a sub‑office of the Designs Office, is not
open for business, the act may be done in prescribed circumstances on the next
day when the office or sub‑office is open for business.
(2) For the purposes of this section, the
Designs Office, or a sub‑office of the Designs Office, is taken not to be
open for business on a day:
(a) declared by regulations to be a
day on which the office or sub‑office is not open for business; or
(b) declared, by a prescribed person
in writing published in the prescribed way, to be a day on which the office or
sub‑office is not open for business.
Declarations
(3) A declaration mentioned in paragraph (2)(a)
or (b) may identify the day by reference to its being declared a public holiday
by or under a law of a State or Territory. This does not limit the way the
declaration may identify the day.
(4) A declaration mentioned in paragraph (2)(b):
(a) may be made before, on or after
the day; and
(b) is not a legislative instrument.
Relationship with other law
(5) This section has effect despite the rest
of this Act.
(6) Subsection 36(2) of the Acts
Interpretation Act 1901 does not apply in relation to the act mentioned in subsection (1)
of this section.
Exception for prescribed act
(7) This section does not apply to a
prescribed act.
Note: Subsection 36(2) of the Acts Interpretation
Act 1901 is relevant to a prescribed act.
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 cannot 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 proposing
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
extended, 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
may, as prescribed, oppose the granting of the application.
(6) If the Registrar is satisfied that an
application under subsection (2) would not be granted, even in the absence
of opposition under subsection (5):
(a) the Registrar need not advertise
the application 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 Act
(other than court proceedings).
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 meaning 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 before 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 paragraph (2)(b)
must not sell to another person the right to use the design or grant a licence
to another person to use the design.
(5) A person who continues to use a design
because 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
registration 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 application 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.
142
Right of lien of registered patent attorney and registered trade 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 solicitor has in relation to the documents and
property of a client.
143
Revocation of registration does not affect court 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 things 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‑office 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 have been entered in the Register as the registered owner.
(3) An amendment by the Registrar under this
section 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
(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 subsection includes the power to make regulations:
(a) requiring persons to give
statutory declarations in relation to applications under the Act or
regulations, or in relation to proceedings 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 applications 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 started 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 the 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.
(3) Despite the repeal of the Designs Act
1906 by this Act, regulations made under paragraph (2)(l) may provide
for the continued operation of specified provisions of the Designs Act 1906
in relation to prescribed persons or matters, or in prescribed circumstances.
Chapter 12—Repeal, transitional and saving provisions
Part 1—Repeal of Designs Act 1906
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
purposes 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 ceased 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.
(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 the old Act, the Registrar is required to register the design to which
the application relates, the 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
commencing 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 application of
section 27A of the old Act.
155
Pending proceedings
(1) If proceedings arising from an application
to a court under the old Act were pending immediately before the commencing
day, the matter is to be decided as if the old Act had not been repealed.
(2) However, any order made by a court in
relation 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 commencing 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
(b) this Act does not apply for the
purposes of determining whether the person’s conduct infringed the monopoly in
the design; and
(c) a person is not entitled to any
injunction 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 continues 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
Register 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
application 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 examination 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 from 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 priority 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
include a request under section 35 of this Act for registration of each of
the designs disclosed in the converted application.
(6) The term of registration of a design
disclosed 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
application relates is taken to be an amendment requested under section 28
of this Act.
(8) If:
(a) a converted application is amended
under 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 designs starts
from the date of the conversion request under subsection 159(1).
160A
Approvals under subsection 40A(6) of old Act
An approval that was in force under
subsection 40A(6) of the old Act immediately before the commencing day has
effect on and after that day as if it were an approval under subsection 99(2)
of this Act.
161
Definitions
In this Chapter:
commencing day means the day on which this section
commences.
old Act means the Designs Act 1906.
transitional application means an application
for registration of a design that:
(a) is made under the old Act before
the commencing day; and
(b) is not a lapsed application; and
(c) is not in relation to a design
that has been registered or refused registration.