Australia

Designs Act 2003 (consolidated as of February 24, 2019)

Authorised Version C2019C00086 registered 25/02/2019

Designs Act 2003

No. 147, 2003

Compilation No. 17

Compilation date: 24 February 2019

Includes amendments up to: Act No. 77, 2018

Registered: 25 February 2019

Prepared by the Office of Parliamentary Counsel, Canberra

About this compilation

This compilation

This is a compilation of the Designs Act 2003 that shows the text of the law as

amended and in force on 24 February 2019 (the compilation date).

The notes at the end of this compilation (the endnotes) include information

about amending laws and the amendment history of provisions of the compiled

law.

Uncommenced amendments

The effect of uncommenced amendments is not shown in the text of the

compiled law. Any uncommenced amendments affecting the law are accessible

on the Legislation Register (www.legislation.gov.au). The details of

amendments made up to, but not commenced at, the compilation date are

underlined in the endnotes. For more information on any uncommenced

amendments, see the series page on the Legislation Register for the compiled

law.

Application, saving and transitional provisions for provisions and

amendments

If the operation of a provision or amendment of the compiled law is affected by

an application, saving or transitional provision that is not included in this

compilation, details are included in the endnotes.

Editorial changes

For more information about any editorial changes made in this compilation, see

the endnotes.

Modifications

If the compiled law is modified by another law, the compiled law operates as

modified but the modification does not amend the text of the law. Accordingly,

this compilation does not show the text of the compiled law as modified. For

more information on any modifications, see the series page on the Legislation

Register for the compiled law.

Self-repealing provisions

If a provision of the compiled law has been repealed in accordance with a

provision of the law, details are included in the endnotes.

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Contents

Chapter 1—Introductory 1

Part 1—Preliminary 1 1 Short title ...........................................................................................1

2 Commencement.................................................................................1

3 Crown to be bound ............................................................................2

4 Application of the Act .......................................................................2

Part 2—Interpretation 3 5 Definitions.........................................................................................3

5A Meaning of Convention country ........................................................7

6 Definition of product .........................................................................7

7 Definition of visual feature................................................................8

8 References in this Act to a design......................................................8

Chapter 2—Design rights, ownership and registrable

designs 9

Part 1—Simplified outline of Chapter 2 9 9 Simplified outline ..............................................................................9

Part 2—Design rights 10 10 Exclusive rights of registered owners ..............................................10

11 Assignment of interest in a design...................................................10

12 Power of registered owner to deal with registered design ...............11

Part 3—Ownership of designs 12 13 Who is entitled to be registered as the registered owner of a

design ..............................................................................................12

14 Ownership of registered designs......................................................13

Part 4—Registrable designs: Validity 14

Division 1—Registrable designs 14

15 Registrable designs..........................................................................14

16 Designs that are identical or substantially similar in overall

impression .......................................................................................14

17 Certain things to be disregarded in deciding whether a design

is new and distinctive ......................................................................15

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18 Certain designs not to be treated as other than new and

distinctive ........................................................................................15

Division 2—Substantial similarity in overall impression 17

19 Factors to be considered in assessing substantial similarity in

overall impression ...........................................................................17

Chapter 3—Design applications 19

Part 1—Simplified outline of Chapter 3 19 20 Simplified outline ............................................................................19

Part 2—Design applications 20

Division 1—Applications 20

21 Person may file a design application ...............................................20

22 A design application may be in respect of more than one

design ..............................................................................................20

23 Design applications covering excluded designs...............................21

Division 2—How Registrar must deal with a design application 22

24 Design applications that meet the minimum filing

requirements ....................................................................................22

25 Publication of receipt of application................................................22

Division 3—Filing date and priority date 23

26 Filing date........................................................................................23

27 Priority date .....................................................................................23

Part 3—Amendment or withdrawal of design applications 24 28 Amendment of design applications..................................................24

29 Disputes between applicants............................................................24

30 Persons may ask for design application to proceed in the

person’s name ..................................................................................25

31 Publication of certain details of amended application .....................26

32 Withdrawal of designs and design applications...............................26

Part 4—Lapsing of design applications 27 33 Lapsing of design applications ........................................................27

Chapter 4—Registration or publication of designs 28

Part 1—Simplified outline of Chapter 4 28 34 Simplified outline ............................................................................28

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29Part 2—Requests for registration or publication 35 Request for registration or publication ............................................29

36 Request for registration or publication—applications in

respect of more than one design ......................................................29

37 Request in respect of designs excluded from an application

in respect of more than one design ..................................................30

38 Replacement of request for registration with request for

publication.......................................................................................30

Part 3—Registration 31

Division 1—Formalities check 31

39 Formalities check—applications in respect of one design

only..................................................................................................31

40 Formalities check—applications in respect of more than one

design ..............................................................................................31

41 Registrar must give applicants an opportunity to correct

deficiencies......................................................................................32

42 What happens after Registrar’s notification under section 41 .........32

43 Registrar must refuse to register certain designs .............................33

44 Registrar must register certain designs after refusal ........................34

Division 2—Registration procedures 35

45 Registrar must notify applicant of registration and give

public notice ....................................................................................35

Division 3—Term of registration 36

46 Term of registration .........................................................................36

47 Renewal of registration....................................................................36

48 Ceasing of registration.....................................................................36

49 Surrender of registration..................................................................37

50 Revocation of registration on surrender...........................................38

Division 4—Revocation on grounds relating to entitled persons 39

51 Revocation of registration on grounds relating to entitled

persons.............................................................................................39

52 Procedures in relation to application ...............................................39

53 Applications by persons declared to be entitled persons in

court proceedings.............................................................................40

54 Applications by entitled persons after revocation following

surrender of registration...................................................................41

55 Priority date of design if an application filed by a person

declared to be an entitled person .....................................................41

56 Meaning of original registered owner .............................................42

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43Part 4—Publication 57 Publication of a design ....................................................................43

58 What happens after Registrar’s notification under section 57 .........43

59 Refusal to publish ............................................................................44

Part 5—Certain documents to be available for public

inspection 45 60 Design applications for registered designs and associated

documents to be open for public inspection.....................................45

61 Certain documents not to be published............................................46

Chapter 5—Examination of designs 48

Part 1—Simplified outline of Chapter 5 48 62 Simplified outline ............................................................................48

Part 2—Requests for examination 49 63 Examination of design .....................................................................49

64 Requirements for request for examination of design .......................49

Part 3—Examination 51 65 What Registrar must do in examining a design ...............................51

66 Amendment of registration ..............................................................51

67 Certificate of examination where registration valid.........................52

68 Revocation of registration after examination...................................53

Part 4—Material may be provided to Registrar 55 69 Certain material may be provided to Registrar ................................55

Chapter 6—Infringement 56

Part 1—Simplified outline of Chapter 6 56 70 Simplified outline ............................................................................56

Part 2—Infringement of registered design 57 71 Infringement of design.....................................................................57

72 Certain repairs do not infringe registered design .............................58

73 Infringement proceedings ................................................................60

74 Counter-claims ................................................................................60

75 Remedies for infringement ..............................................................60

76 Intervention by Registrar .................................................................61

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62Part 3—Relief from unjustified threats 77 Application for relief from unjustified threats .................................62

78 Court’s power to grant relief............................................................63

79 Counter-claim..................................................................................63

80 Mere notification of registration not a threat ...................................63

81 Legal practitioners, registered patent attorneys and registered

trade marks attorneys.......................................................................64

Chapter 7—Jurisdiction and powers of courts 65

Part 1—Simplified outline of Chapter 7 65 82 Simplified outline ............................................................................65

Part 2—Jurisdiction 66 83 Jurisdiction of Federal Court ...........................................................66

83A Jurisdiction of the Federal Circuit Court .........................................66

84 Jurisdiction of other prescribed courts.............................................66

85 Exercise of jurisdiction....................................................................67

86 Transfer of proceedings etc. ............................................................67

87 Appeals............................................................................................68

88 Powers of Federal Court and Federal Circuit Court on

hearing an appeal.............................................................................68

89 Registrar may appear in appeals ......................................................69

Part 3—Compulsory licences and revocation of registration 70 90 Person may apply to court for compulsory licence ..........................70

91 Terms of compulsory licence...........................................................70

92 Revocation of registration after grant of compulsory licence ..........71

Part 4—Revocation of registration by court in other

circumstances 73 93 Revocation of registration in other circumstances ...........................73

Chapter 8—The Crown 74

Part 1—Simplified outline of Chapter 8 74 94 Simplified outline ............................................................................74

Part 2—Use by the Crown 75 95 Meaning of terms.............................................................................75

96 Use of design by the Commonwealth or a State ..............................75

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97 Applicants, entitled persons and registered owners to be

informed of use................................................................................76

98 Terms of use ....................................................................................76

99 Previous agreements inoperative .....................................................77

100 Infringement ....................................................................................77

101 Declaration by court ........................................................................77

102 Use of design to cease under court order .........................................78

103 Sale of products ...............................................................................78

104 Forfeited products............................................................................78

105 Supply of products by the Commonwealth to foreign

countries ..........................................................................................79

Part 3—Acquisition by and assignments to the Crown 80 106 Acquisition of design by the Commonwealth..................................80

107 Assignment of design to the Commonwealth ..................................81

Part 4—Prohibition orders 82 108 Prohibition of publication of information about designs .................82

109 Publication of information about designs ........................................82

Chapter 9—The Register 84 110 Simplified outline ............................................................................84

111 Registrar must keep Register ...........................................................84

112 Register may be kept by computer ..................................................85

113 Inspection of Register......................................................................85

114 Amendments of Register to record changes of ownership...............85

115 Amendments of Register made to give effect to certain

decisions ..........................................................................................86

116 Reissue of certificates......................................................................86

117 Trusts not to be entered in Register .................................................86

118 Evidentiary provision ......................................................................87

119 Admissibility of unregistered interests ............................................87

120 Rectification of Register ..................................................................88

Chapter 10—Administration 89 121 Simplified outline ............................................................................89

122 Registrar ..........................................................................................89

123 Deputy Registrars ............................................................................89

124 Delegation by Registrar ...................................................................90

125 Designs Office .................................................................................90

126 Seal of Designs Office.....................................................................90

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127 Registrar’s Powers...........................................................................91

128 Recovery of costs ............................................................................91

Chapter 11—Miscellaneous 92

Part 1—Simplified outline of Chapter 11 92 129 Simplified outline ............................................................................92

Part 2—Fees 93 130 Fees .................................................................................................93

130A Approved means of paying a fee .....................................................94

Part 3—Offences 95 131 False entries in Register...................................................................95

132 False representation that a design is registered ................................95

133 False representations about the Designs Office ...............................96

134 Failure to comply with requirements of Registrar ...........................97

135 Officers not to traffic etc. in designs................................................97

Part 3A—Computerised decision-making 99 135A Computerised decision-making .......................................................99

Part 4—Review of the Registrar’s decisions 100 136 Review by Administrative Appeals Tribunal.................................100

Part 4A—Doing act after end of period otherwise provided for

doing it 102 136A Doing act when Designs Office reopens after end of period

otherwise provided for doing act ...................................................102

Part 5—Extensions of time 104 137 Extensions of time .........................................................................104

138 Consequences of extension............................................................105

139 Protection of third parties ..............................................................105

140 Infringement proceedings ..............................................................106

Part 6—Other 107 141 Powers of agents............................................................................107

142 Right of lien of registered patent attorney and registered

trade marks attorney ......................................................................107

143 Revocation of registration does not affect court decisions and

things done under contracts before revocation ..............................107

144 Filing of documents .......................................................................107

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144A Approved means of filing documents ............................................107

144B Directions by Registrar for filing of documents ............................108

144C Directions by Registrar for filing of evidence ...............................108

144D Notifications by Registrar under this Act or regulations................109

145 Service of documents ....................................................................109

146 Death of applicant before application determined .........................110

147 Death of person after design registered .........................................110

148 Exercise of discretionary power by Registrar ................................110

149 Regulations....................................................................................111

Chapter 12—Repeal, transitional and saving

provisions 114

Part 1—Repeal of Designs Act 1906 114 150 Repeal............................................................................................114

Part 2—Transitional and saving provisions 115 151 Application of this Act to certain designs......................................115

152 Term of registration of certain designs ..........................................115

153 Applications made before commencing day..................................116

154 Other applications and proceedings ...............................................116

155 Pending proceedings......................................................................117

156 Infringement under old Act ...........................................................117

157 Registrar and Deputy Registrar .....................................................118

158 The Register ..................................................................................118

159 Conversion of transitional applications .........................................118

160 Effect of a converted application ...................................................119

160A Approvals under subsection 40A(6) of old Act .............................120

161 Definitions.....................................................................................120

Endnotes 121

Endnote 1—About the endnotes 121

Endnote 2—Abbreviation key 123

Endnote 3—Legislation history 124

Endnote 4—Amendment history 126

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Introductory Chapter 1

Preliminary Part 1

Section 1

An Act relating to designs, and for related purposes

Chapter 1—Introductory

Part 1—Preliminary

1 Short title

This Act may be cited as the Designs Act 2003.

2 Commencement

(1) Each provision of this Act specified in column 1 of the table

commences, or is taken to have commenced, on the day or at the

time specified in column 2 of the table.

Commencement information

Column 1 Column 2 Column 3

Provision(s) Commencement Date/Details

1. Sections 1 and The day on which this Act receives the 17 December

2 and anything in Royal Assent 2003

this Act not

elsewhere covered

by this table

2. Sections 3 to A single day to be fixed by Proclamation, 17 June 2004

161 subject to subsection (3)

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.

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Chapter 1 Introductory

Part 1 Preliminary

Section 3

(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 and of the

Northern Territory.

(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.

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Introductory Chapter 1

Interpretation Part 2

Section 5

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 has the meaning given by section 5A.

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.

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Chapter 1 Introductory

Part 2 Interpretation

Section 5

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.

Federal Circuit Court means the Federal Circuit Court of

Australia.

Federal Court means the Federal Court of Australia.

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:

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Introductory Chapter 1

Interpretation Part 2

Section 5

(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.

PPSA security interest (short for Personal Property Securities Act

security interest) means a security interest within the meaning of

the Personal Property Securities Act 2009 and to which that Act

applies, other than a transitional security interest within the

meaning of that Act.

Note 1: The Personal Property Securities Act 2009 applies to certain security

interests in personal property. See the following provisions of that

Act:

(a)

(b)

(c)

section 8 (interests to which the Act does not apply);

section 12 (meaning of security interest);

Chapter 9 (transitional provisions).

Note 2: For the meaning of transitional security interest, see section 308 of

the Personal Property Securities Act 2009.

preferred means:

(a) in relation to filing a document with the Designs Office—

means the means specified under subsection 144A(4); or

(b) in relation to paying a fee—means the means specified under

subsection 130A(4).

prescribed court means the following:

(a) the Federal Court of Australia;

(aa) the Federal Circuit Court;

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Chapter 1 Introductory

Part 2 Interpretation

Section 5

(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:

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Introductory Chapter 1

Interpretation Part 2

Section 5A

(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.

5A Meaning of Convention country

(1) In this Act:

Convention country means a foreign country or region of a kind

prescribed by the regulations.

(2) Despite subsection 14(2) of the Legislation Act 2003, regulations

made for the purposes of this section may make provision in

relation to a matter by applying, adopting or incorporating, with or

without modification, any matter contained in any other instrument

or other writing as in force or existing from time to time.

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.

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Chapter 1 Introductory

Part 2 Interpretation

Section 7

(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.

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Design rights, ownership and registrable designs Chapter 2

Simplified outline of Chapter 2 Part 1

Section 9

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.

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Chapter 2 Design rights, ownership and registrable designs

Part 2 Design rights

Section 10

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.

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Design rights, ownership and registrable designs Chapter 2

Design rights Part 2

Section 12

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.

(2A) Despite subsection (1), the recording in the Register of a right that

is a PPSA security interest does not affect a dealing with an interest

in a registered design.

(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.

(4) Subsection (3) does not apply in relation to an equity that is a

PPSA security interest.

Note: The Personal Property Securities Act 2009 deals with the rights of

purchasers of personal property (including intellectual property such

as designs) that is subject to PPSA security interests. That Act also

provides for the priority and enforcement of PPSA security interests.

See the following provisions of that Act:

(a) Part 2.5 (taking personal property free of security interests);

(b) Part 2.6 (priority between security interests);

(c) Chapter 4 (enforcement of security interests).

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Chapter 2 Design rights, ownership and registrable designs

Part 3 Ownership of designs

Section 13

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

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Ownership of designs Part 3

Section 14

(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.

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Chapter 2 Design rights, ownership and registrable designs

Part 4 Registrable designs: Validity

Division 1 Registrable designs

Section 15

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 2B 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

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Registrable designs: Validity Part 4

Registrable designs Division 1

Section 17

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:

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Part 4 Registrable designs: Validity

Division 1 Registrable designs

Section 18

(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.

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Registrable designs: Validity Part 4

Substantial similarity in overall impression Division 2

Section 19

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).

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Chapter 2 Design rights, ownership and registrable designs

Part 4 Registrable designs: Validity

Division 2 Substantial similarity in overall impression

Section 19

(5) In this section, a reference to a person includes a reference to a

court.

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Design applications Chapter 3

Simplified outline of Chapter 3 Part 1

Section 20

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.

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Chapter 3 Design applications

Part 2 Design applications

Division 1 Applications

Section 21

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.

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Design applications Part 2

Applications Division 1

Section 23

(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.

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Chapter 3 Design applications

Part 2 Design applications

Division 2 How Registrar must deal with a design application

Section 24

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, by notification

to the applicant, state:

(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 notify the applicant to that effect.

The notification must:

(a) identify each minimum filing requirement that has not been

met; and

(b) require the applicant to file the additional information

required within 2 months, or such other period as is

prescribed, from the date of the notification.

(3) If the minimum filing requirements are not met within the period

under paragraph (2)(b), the application is taken never to have been

filed.

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.

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Design applications Chapter 3

Design applications Part 2

Filing date and priority date Division 3

Section 26

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.

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Chapter 3 Design applications

Part 3 Amendment or withdrawal of design applications

Section 28

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 or the Federal Circuit 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:

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Amendment or withdrawal of design applications Part 3

Section 30

(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.

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Chapter 3 Design applications

Part 3 Amendment or withdrawal of design applications

Section 31

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.

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Design applications Chapter 3

Lapsing of design applications Part 4

Section 33

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 notification 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 notification 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.

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Chapter 4 Registration or publication of designs

Part 1 Simplified outline of Chapter 4

Section 34

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).

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Registration or publication of designs Chapter 4

Requests for registration or publication Part 2

Section 35

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.

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Chapter 4 Registration or publication of designs

Part 2 Requests for registration or publication

Section 37

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.

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Registration or publication of designs Chapter 4

Registration Part 3

Formalities check Division 1

Section 39

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;

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Part 3 Registration

Division 1 Formalities check

Section 41

(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 notify the

applicant:

(a) of 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 notification

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’s notification under section 41

(1) This section applies if the Registrar has given a notification 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 notification as mentioned

in subparagraph 41(c)(ii), the Registrar must consider the response.

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Registration Part 3

Formalities check Division 1

Section 43

(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 notification 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 notification under section 41, if the applicant has not:

(a) amended the application; or

(b) responded in writing to the notification 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.

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Part 3 Registration

Division 1 Formalities check

Section 44

(3) The Registrar must notify the applicant of a refusal under

subsection (1) or (2) and of 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.

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Registration or publication of designs Chapter 4

Registration Part 3

Registration procedures Division 2

Section 45

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.

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Part 3 Registration

Division 3 Term of registration

Section 46

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

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Term of registration Division 3

Section 49

(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.

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Part 3 Registration

Division 3 Term of registration

Section 50

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 or the Federal Circuit Court

against a decision of the Registrar under this section.

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Registration or publication of designs Chapter 4

Registration Part 3

Revocation on grounds relating to entitled persons Division 4

Section 51

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) notify the relevant parties that the registration of the design is

revoked; and

(b) make an entry in the Register under section 115.

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Division 4 Revocation on grounds relating to entitled persons

Section 53

(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 or the Federal Circuit 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.

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Registration Part 3

Revocation on grounds relating to entitled persons Division 4

Section 54

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 or the Federal Circuit 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.

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Part 3 Registration

Division 4 Revocation on grounds relating to entitled persons

Section 56

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.

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Registration or publication of designs Chapter 4

Publication Part 4

Section 57

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 notify the applicant:

(a) of 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 notification

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’s notification under section 57

(1) This section applies if the Registrar has given a notification 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.

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Part 4 Publication

Section 59

(3) If the applicant responds in writing to the notification 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 notification 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 a notification under

subsection 57(3); and

(b) the applicant has not responded to the notification 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 of a refusal under

subsection (1) and of the reasons for the refusal.

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Registration or publication of designs Chapter 4

Certain documents to be available for public inspection Part 5

Section 60

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;

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Part 5 Certain documents to be available for public inspection

Section 61

(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.

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Section 61

(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.

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Chapter 5 Examination of designs

Part 1 Simplified outline of Chapter 5

Section 62

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.

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Examination of designs Chapter 5

Requests for examination Part 2

Section 63

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.

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Part 2 Requests for examination

Section 64

(3) The Registrar must make available for public inspection material

contained in a request under this section in relation to the newness

and distinctiveness of the design to which the request relates.

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Examination of designs Chapter 5

Examination Part 3

Section 65

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 notify the registered owner of the design to that

effect.

(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.

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Part 3 Examination

Section 67

(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 notify the relevant parties:

(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—of 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:

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Examination Part 3

Section 68

(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 or the Federal Circuit 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) notify the relevant parties 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.

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Part 3 Examination

Section 68

(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 or the Federal Circuit Court

against a decision of the Registrar under this section.

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Examination of designs Chapter 5

Material may be provided to Registrar Part 4

Section 69

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.

(2A) A person must not provide to the Registrar material in the form of

a physical article, other than a document, unless the Registrar has

given the person an approval to do so.

(2B) If a person provides material to the Registrar under subsection (1),

the material may be accompanied by evidence, in the form of a

declaration, of the publication of the material.

Note: The regulations deal with the making of declarations.

(3) If a person provides material to the Registrar under subsection (1),

the Registrar must:

(a) notify 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.

(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.

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Chapter 6 Infringement

Part 1 Simplified outline of Chapter 6

Section 70

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.

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Infringement Chapter 6

Infringement of registered design Part 2

Section 71

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.

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Chapter 6 Infringement

Part 2 Infringement of registered design

Section 72

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:

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(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).

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Chapter 6 Infringement

Part 2 Infringement of registered design

Section 73

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:

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(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.

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Chapter 6 Infringement

Part 3 Relief from unjustified threats

Section 77

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.

(1A) The court may include an additional amount in an assessment of

damages sustained by the applicant as a result of the unjustified

threats, if the court considers it appropriate to do so having regard

to:

(a) the flagrancy of the threats; and

(b) the need to deter similar threats; and

(c) the conduct of the respondent that occurred after the

respondent made the threats; and

(d) any benefit shown to have accrued to the respondent because

of the threats; and

(e) all other relevant matters.

(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.

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Relief from unjustified threats Part 3

Section 78

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.

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Chapter 6 Infringement

Part 3 Relief from unjustified threats

Section 81

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.

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Jurisdiction and powers of courts Chapter 7

Simplified outline of Chapter 7 Part 1

Section 82

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 and the Federal Circuit Court are

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.

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Chapter 7 Jurisdiction and powers of courts

Part 2 Jurisdiction

Section 83

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:

(a) the Federal Circuit Court under subsection 83A(2); and

(b) 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.

83A Jurisdiction of the Federal Circuit Court

(1) The Federal Circuit Court has jurisdiction with respect to matters

arising under this Act.

(2) The jurisdiction of the Federal Circuit 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:

(a) the Federal Court under subsection 83(2); and

(b) 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 Circuit Court.

84 Jurisdiction of other prescribed courts

(1) Each prescribed court other than the Federal Court or the Federal

Circuit Court has jurisdiction in respect of matters arising under

this Act in relation to which proceedings may be brought in a

prescribed court.

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Jurisdiction and powers of courts Chapter 7

Jurisdiction Part 2

Section 85

(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, 83A 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.

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Chapter 7 Jurisdiction and powers of courts

Part 2 Jurisdiction

Section 87

(3) This section does not apply in relation to a transfer of proceedings

between the Federal Court and the Federal Circuit Court.

Note: For transfers of proceedings from the Federal Circuit Court to the

Federal Court, see section 39 of the Federal Circuit Court of Australia

Act 1999. For transfers of proceedings from the Federal Court to the

Federal Circuit Court, see section 32AB of the Federal Court of

Australia Act 1976.

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 or the

Federal Circuit 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 and Federal Circuit Court on hearing

an appeal

On hearing an appeal against a decision or direction of the

Registrar, the Federal Court or Federal Circuit 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;

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Jurisdiction Part 2

Section 89

(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 or Federal Circuit Court against a decision or

direction of the Registrar, even if the Registrar is not a party to the

appeal.

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Chapter 7 Jurisdiction and powers of courts

Part 3 Compulsory licences and revocation of registration

Section 90

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

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Compulsory licences and revocation of registration Part 3

Section 92

(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

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Part 3 Compulsory licences and revocation of registration

Section 92

(b) the registered owner of the design has given no satisfactory

reason for failing to exercise the exclusive rights in the

design.

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Jurisdiction and powers of courts Chapter 7

Revocation of registration by court in other circumstances Part 4

Section 93

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.

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Chapter 8 The Crown

Part 1 Simplified outline of Chapter 8

Section 94

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.

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The Crown Chapter 8

Use by the Crown Part 2

Section 95

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.

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Chapter 8 The Crown

Part 2 Use by the Crown

Section 97

(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.

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The Crown Chapter 8

Use by the Crown Part 2

Section 99

(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.

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Chapter 8 The Crown

Part 2 Use by the Crown

Section 102

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.

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The Crown Chapter 8

Use by the Crown Part 2

Section 105

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.

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Chapter 8 The Crown

Part 3 Acquisition by and assignments to the Crown

Section 106

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.

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The Crown Chapter 8

Acquisition by and assignments to the Crown Part 3

Section 107

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.

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Chapter 8 The Crown

Part 4 Prohibition orders

Section 108

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

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Prohibition orders Part 4

Section 109

(c) the person’s conduct contravenes the order.

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.

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Chapter 9 The Register

Section 110

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.

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The Register Chapter 9

Section 112

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.

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Chapter 9 The Register

Section 115

(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.

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Section 118

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.

(3A) This section does not apply in relation to any particulars recorded

in the Register in relation to a PPSA security interest.

Note: Certain particulars relating to registrations in respect of PPSA security

interests under the Personal Property Securities Act 2009 are

admissible in evidence: see section 174 of that Act.

(4) In this section:

signed means signed by or on behalf of the Registrar.

119 Admissibility of unregistered interests

(1) 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.

(2) However, subsection (1) does not restrict the admissibility in

evidence in a court of a document or instrument in relation to a

PPSA security interest.

Note: Certain particulars relating to registrations in respect of PPSA security

interests under the Personal Property Securities Act 2009 are

admissible in evidence: see section 174 of that Act.

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Chapter 9 The Register

Section 120

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.

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Administration Chapter 10

Section 121

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

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Chapter 10 Administration

Section 124

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) The Registrar may establish one or more sub-offices of the Designs

Office as the Registrar considers appropriate.

(3) The Registrar may abolish any such sub-offices.

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.

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Administration Chapter 10

Section 127

(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.

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Chapter 11 Miscellaneous

Part 1 Simplified outline of Chapter 11

Section 129

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 3A deals with computerised decision-making.

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.

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Miscellaneous Chapter 11

Fees Part 2

Section 130

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.

(2A) Without limiting subsection (1), different fees may be prescribed

for filing a document with the Designs Office according to the

means by which the document is filed.

(2B) Without limiting subsection (1), different amounts of a fee may be

prescribed according to the means by which the fee is paid.

Means of paying fee

(2C) A fee must be paid by a means determined in an instrument under

subsection 130A(1).

Fees payable in accordance with the regulations

(3) The prescribed fees are payable in accordance with the regulations.

Consequences of failure to pay fee

(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

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Chapter 11 Miscellaneous

Part 2 Fees

Section 130A

(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).

130A Approved means of paying a fee

(1) For the purposes of subsection 130(2C), the Registrar may, by

writing, determine one or more means for paying a fee.

(2) The means may be an electronic means or any other means.

(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for paying a fee are preferred means.

Note: Under the regulations, the amount of a fee may be reduced for paying

the fee by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

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Miscellaneous Chapter 11

Offences Part 3

Section 131

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.

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.

Penalty for contravention of this subsection: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.

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.

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Chapter 11 Miscellaneous

Part 3 Offences

Section 133

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.

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.

Penalty: 30 penalty units.

(2) Strict liability applies to paragraph (1)(b).

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Miscellaneous Chapter 11

Offences Part 3

Section 134

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.

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

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Part 3 Offences

Section 135

(b) a right to, or licence under, a registered design, whether

granted in Australia or anywhere else.

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).

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Miscellaneous Chapter 11

Computerised decision-making Part 3A

Section 135A

Part 3A—Computerised decision-making

135A Computerised decision-making

(1) The Registrar may arrange for the use, under the Registrar’s

control, of computer programs for any purposes for which the

Registrar may, or must, under this Act or the regulations:

(a) make a decision; or

(b) exercise any power or comply with any obligation; or

(c) do anything else related to making a decision to which

paragraph (a) applies or related to exercising a power, or

complying with an obligation, to which paragraph (b)

applies.

(2) For the purposes of this Act and the regulations, the Registrar is

taken to have:

(a) made a decision; or

(b) exercised a power or complied with an obligation; or

(c) done something else related to the making of a decision or

the exercise of a power or the compliance with an obligation;

that was made, exercised, complied with or done by the operation

of a computer program under an arrangement made under

subsection (1).

Substituted decisions

(3) The Registrar may substitute a decision for a decision the Registrar

is taken to have made under paragraph (2)(a) if the Registrar is

satisfied that the decision made by the operation of the computer

program is incorrect.

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Chapter 11 Miscellaneous

Part 4 Review of the Registrar’s decisions

Section 136

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.

(1A) If:

(a) the Registrar is taken to have made a decision (the initial

decision) under paragraph 135A(2)(a); and

(b) under subsection (1) of this section, a person may apply to

the Administrative Appeals Tribunal for review of the initial

decision; and

(c) the Registrar, under subsection 135A(3), substitutes a

decision for the initial decision;

a person may apply to the Administrative Appeals Tribunal for

review of the substituted decision.

(2) If, under subsection (1) or (1A), a person may apply to the

Administrative Appeals Tribunal for review of a decision 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

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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.

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Part 4A Doing act after end of period otherwise provided for doing it

Section 136A

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 (if any), 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 (if any), 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.

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Section 136A

(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.

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Part 5 Extensions of time

Section 137

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

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(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) notify 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:

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(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.

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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

For the purposes of this Act and the regulations, a document may

be filed with the Designs Office by a means determined in an

instrument under subsection 144A(1).

144A Approved means of filing documents

(1) For the purposes of section 144, the Registrar may, by writing,

determine one or more means for filing a document with the

Designs Office.

(2) The means may be an electronic means or any other means.

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(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the determination.

(4) The Registrar may, in a determination under subsection (1), specify

that one or more means for filing a document with the Designs

Office are preferred means.

Note: Under the regulations, reduced fees may be payable for filing a

document by preferred means.

(5) A determination under subsection (1) is not a legislative

instrument.

144B Directions by Registrar for filing of documents

(1) The Registrar may, by writing, give a direction specifying the form

in which a document is to be filed under this Act or the regulations.

Note: See also paragraph 149(2)(aa) (about regulations).

(2) Subsection (1) does not apply in relation to a document that is

required, under the regulations, to be in an approved form.

(3) The Registrar must publish a notice, in accordance with the

regulations, setting out the direction.

(4) A direction under subsection (1) is not a legislative instrument.

144C Directions by Registrar for filing of evidence

(1) The Registrar may, by writing, give a direction in relation to the

filing of evidence in connection with a matter arising under this

Act or the regulations.

Note: See also paragraph 149(2)(ab) (about regulations).

(2) Without limiting subsection (1), a direction under that subsection

may relate to the following:

(a) the number of copies of evidence to be filed;

(b) the form in which evidence is to be filed (including the

circumstances in which physical articles, other than

documents, are or are not permitted to be filed);

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(c) the means by which evidence is to be filed.

(3) Without limiting paragraph (2)(b), a direction under subsection (1)

may require that evidence in writing be in the form of a

declaration.

(4) This section does not apply in relation to the provision of material

under section 69 (about material relating to whether a registered

design is new or distinctive).

(5) The Registrar must publish a notice, in accordance with the

regulations, setting out a direction under subsection (1).

(6) A direction under subsection (1) is not a legislative instrument.

144D Notifications by Registrar under this Act or regulations

(1) If under this Act or the regulations the Registrar is required or

permitted:

(a) to notify a person of a matter; or

(b) to notify a person that the person is required to do a thing;

the Registrar may so notify the person by any means of

communication (including by electronic means).

Note: Section 145 deals with the service etc. of documents on a person.

(2) However, the notification must be by a means of communication

such that the content of the notification is readily accessible so as

to be usable for subsequent reference.

145 Service of documents

(1) 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 or New Zealand for service of documents, the

document may be served on, or given or sent to, the person by a

prescribed means to that address.

(2) After the time specified in the regulations, a reference in this

section to an address includes a reference to an electronic address.

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(3) The time specified under subsection (2) must be later than the day

on which the regulations are registered under the Legislation Act

2003.

(4) For the purposes of this section, the question of whether an

electronic address is in Australia is to be determined in accordance

with the regulations.

(5) For the purposes of this section, the question of whether an

electronic address is in New Zealand is to be determined in

accordance with the regulations.

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.

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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:

(aa) making provision for and in relation to the following:

(i) the requirements for filing a document under this Act or

the regulations (including the requirement that the

document must be in the form (if any) specified in a

direction under section 144B);

(ii) the consequences of a document not being in

accordance with an approved form or not complying

with the requirements referred to in subparagraph (i);

and

(ab) making provision for and in relation to the consequences of

not complying with a direction under section 144C; and

(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

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(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

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(o) empowering the Registrar to prepare, publish and sell such

documents relating to designs as the Registrar thinks fit.

(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.

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Part 1 Repeal of Designs Act 1906

Section 150

Chapter 12—Repeal, transitional and saving

provisions

Part 1—Repeal of Designs Act 1906

150 Repeal

The Designs Act 1906 is repealed.

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Section 151

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

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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.

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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

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(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

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Section 160

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

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(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.

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Endnotes

Endnote 1—About the endnotes

Endnotes

Endnote 1—About the endnotes

The endnotes provide information about this compilation and the compiled law.

The following endnotes are included in every compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Abbreviation key—Endnote 2

The abbreviation key sets out abbreviations that may be used in the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that

has amended (or will amend) the compiled law. The information includes

commencement details for amending laws and details of any application, saving

or transitional provisions that are not included in this compilation.

The amendment history in endnote 4 provides information about amendments at

the provision (generally section or equivalent) level. It also includes information

about any provision of the compiled law that has been repealed in accordance

with a provision of the law.

Editorial changes

The Legislation Act 2003 authorises First Parliamentary Counsel to make

editorial and presentational changes to a compiled law in preparing a

compilation of the law for registration. The changes must not change the effect

of the law. Editorial changes take effect from the compilation registration date.

If the compilation includes editorial changes, the endnotes include a brief

outline of the changes in general terms. Full details of any changes can be

obtained from the Office of Parliamentary Counsel.

Misdescribed amendments

A misdescribed amendment is an amendment that does not accurately describe

the amendment to be made. If, despite the misdescription, the amendment can

Designs Act 2003

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Endnotes

Endnote 1—About the endnotes

be given effect as intended, the amendment is incorporated into the compiled

law and the abbreviation “(md)” added to the details of the amendment included

in the amendment history.

If a misdescribed amendment cannot be given effect as intended, the

abbreviation “(md not incorp)” is added to the details of the amendment

included in the amendment history.

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Endnotes

Endnote 2—Abbreviation key

Endnote 2—Abbreviation key

ad = added or inserted o = order(s)

am = amended Ord = Ordinance

amdt = amendment orig = original

c = clause(s) par = paragraph(s)/subparagraph(s)

/sub-subparagraph(s)C[x] = Compilation No. x

Ch = Chapter(s) pres = present

def = definition(s) prev = previous

Dict = Dictionary (prev…) = previously

disallowed = disallowed by Parliament Pt = Part(s)

Div = Division(s) r = regulation(s)/rule(s)

ed = editorial change reloc = relocated

exp = expires/expired or ceases/ceased to have renum = renumbered

effect rep = repealed

F = Federal Register of Legislation rs = repealed and substituted

gaz = gazette s = section(s)/subsection(s)

LA = Legislation Act 2003 Sch = Schedule(s)

LIA = Legislative Instruments Act 2003 Sdiv = Subdivision(s)

(md) = misdescribed amendment can be given SLI = Select Legislative Instrument

effect SR = Statutory Rules

(md not incorp) = misdescribed amendment Sub-Ch = Sub-Chapter(s)

cannot be given effect SubPt = Subpart(s)

mod = modified/modification underlining = whole or part not

commenced or to be commencedNo. = Number(s)

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Endnote 3—Legislation history

Endnote 3—Legislation history

Act Number Assent Commencement Application,

and year saving and

transitional

provisions

Designs Act 2003 147, 2003 17 Dec s 3–161: 17 June 2004

2003 (s 2(1) item 2)

Remainder: 17 Dec 2003

(s 2(1) item 1)

Intellectual Property 106, 2006 27 Sept Sch 12 (items 1, 2): 27 —

Laws Amendment Act 2006 Mar 2007 (s 2(1)

2006 item 12)

Sch 15 (item 1): 28 Sept

2006 (s 2(1) item 13)

Personal Property 131, 2009 14 Dec Sch 2 (items 1–7): 30 Sch 2 (item 7)

Securities 2009 Jan 2012 (s 2(1) item 1)

(Consequential

Amendments) Act 2009

Personal Property 96, 2010 6 July 2010 Sch 3 (item 1): 30 Jan —

Securities (Corporations 2012 (s 2(1) item 8)

and Other Amendments)

Act 2010

Acts Interpretation 46, 2011 27 June Sch 2 (item 532) and Sch 3 (items 10,

Amendment Act 2011 2011 Sch 3 (items 10, 11): 27 11)

Dec 2011 (s 2(1) items 3,

12)

Intellectual Property 35, 2012 15 Apr Sch 6 (items 1–22): 15 —

Laws Amendment 2012 Apr 2013 (s 2(1) item 5)

(Raising the Bar) Act

2012

as amended by

Statute Law Revision 31, 2014 27 May Sch 2 (item 5): 15 Apr —

Act (No. 1) 2014 2014 2013 (s 2(1) item 6)

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Endnotes

Endnote 3—Legislation history

Act Number

and year

Assent Commencement Application,

saving and

transitional

provisions

Federal Circuit Court of

Australia (Consequential

Amendments) Act 2013

13, 2013 14 Mar

2013

Sch 3 (items 1–21): 15

Apr 2013 (s 2(1) item 4)

Intellectual Property

Laws Amendment Act

2015

8, 2015 25 Feb

2015

Sch 4 (items 1–4, 81–

84): 24 Feb 2017 (s 2(1)

item 5)

Sch 5 (items 1–4, 7): 26

Feb 2015 (s 2(1) item 6)

Sch 4 (items 81–

84) and Sch 5

(item 7)

Norfolk Island

Legislation Amendment

Act 2015

59, 2015 26 May

2015

Sch 2 (item 126): 1 July

2016 (s 2(1) item 5)

Sch 2 (items 356–396):

18 June 2015 (s 2(1)

item 6)

Sch 2 (items 356–

396)

as amended by

Territories Legislation

Amendment Act 2016

33, 2016 23 Mar

2016

Sch 2: 24 Mar 2016

(s 2(1) item 2)

Acts and Instruments

(Framework Reform)

(Consequential

Provisions) Act 2015

126, 2015 10 Sept

2015

Sch 1 (item 172): 5 Mar

2016 (s 2(1) item 2)

Sch 1 (item 672): 24 Feb

2017 (s 2(1) item 3)

Statute Update Act 2016 61, 2016 23 Sept

2016

Sch 2 (items 31–33): 21

Oct 2016 (s 2(1) item 1)

Intellectual Property

Laws Amendment

(Productivity

Commission Response

Part 1 and Other

Measures) Act 2018

77, 2018 24 Aug

2018

Sch 2 (items 2–33, 110,

114–120, 150, 195, 209):

24 Feb 2019 (s 2(1)

items 6, 8)

Sch 2 (items 157–160):

25 Aug 2018 (s 2(1)

item 7)

Sch 2 (items 110,

150, 209)

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Endnotes

Endnote 4—Amendment history

Endnote 4—Amendment history

Provision affected How affected

Chapter 1

Part 1

s 3 .................................................. am No 59, 2015

Part 2

s 5 .................................................. am No 131, 2009; No 96, 2010; No 35, 2012; No 13, 2013; No 77,

2018

s 5A................................................ ad No 35, 2012

am No 126, 2015

Chapter 2

Part 2

s 12 ................................................ am No 131, 2009

Part 4

Division 1

s 15 ................................................ am No 46, 2011

Chapter 3

Part 2

Division 2

s 24 ................................................ am No 77, 2018

Part 3

s 28 ................................................ am No 35, 2012; No 13, 2013

Part 4

s 33 ................................................ am No 77, 2018

Chapter 4

Part 3

Division 1

s 41 ................................................ am No 77, 2018

s 42 ................................................ am No 77, 2018

s 43 ................................................ am No 77, 2018

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Provision affected

Division 3

s 50 ................................................

Division 4

s 52 ................................................

s 54 ................................................

Part 4

s 57 ................................................

s 58 ................................................

s 59 ................................................

Chapter 5

Part 3

s 66 ................................................

s 67 ................................................

s 68 ................................................

Part 4

s 69 ................................................

Chapter 6

Part 3

s 77 ................................................

Chapter 7

Part 1

s 82 ................................................

Part 2

s 83 ................................................

s 83A..............................................

s 84 ................................................

s 85 ................................................

s 86 ................................................

s 87 ................................................

s 88 ................................................

Compilation No. 17

Endnotes

Endnote 4—Amendment history

How affected

am No 35, 2012; No 13, 2013

am No 35, 2012; No 13, 2013; No 77, 2018

am No 35, 2012; No 13, 2013

am No 77, 2018

am No 77, 2018

am No 77, 2018

am No 77, 2018

am No 35, 2012; No 13, 2013; No 77, 2018

am No 35, 2012; No 13, 2013; No 77, 2018

am No 8, 2015; No 77, 2018

am No 77, 2018

am No 35, 2012; No 13, 2013

am No 35, 2012; No 13, 2013

ad No 35, 2012

am No 13, 2013

am No 35, 2012; No 13, 2013

am No 35, 2012

am No 35, 2012; No 13, 2013

am No 35, 2012; No 13, 2013

am No 35, 2012; No 13, 2013

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Endnote 4—Amendment history

Provision affected

s 89 ................................................

Chapter 8

Part 4

s 109 ..............................................

Chapter 9

s 118 ..............................................

s 119 ..............................................

Chapter 10

s 124 ..............................................

s 125 ..............................................

Chapter 11

Part 1

s 129 ..............................................

Part 2

s 130 ..............................................

s 130A............................................

Part 3

s 131 ..............................................

s 132 ..............................................

s 133 ..............................................

s 134 ..............................................

s 135 ..............................................

Part 3A

Part 3A...........................................

s 135A............................................

Part 4

s 136 ..............................................

Part 4A

Part 4A...........................................

s 136A............................................

Compilation No. 17

How affected

am No 35, 2012; No 13, 2013

am No 61, 2016

am No 131, 2009

am No 131, 2009

am No 106, 2006

am No 35, 2012

am No 106, 2006; No 77, 2018

am No 77, 2018

ad No 77, 2018

am No 61, 2016

am No 61, 2016

am No 61, 2016

am No 61, 2016

am No 61, 2016

ad No 77, 2018

ad No 77, 2018

am No 77, 2018

ad No 106, 2006

ad No 106, 2006

am No 35, 2012

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Endnotes

Endnote 4—Amendment history

Provision affected How affected

Part 5

s 138 .............................................. am No 77, 2018

Part 6

s 144 .............................................. rs No 35, 2012; No 77, 2018

s 144A............................................ ad No 77, 2018

s 144B............................................ ad No 77, 2018

s 144C............................................ ad No 77, 2018

s 144D............................................ ad No 77, 2018

s 145 .............................................. am No 8, 2015; No 126, 2015

s 149 .............................................. am No 8, 2015; No 77, 2018

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