Design Infringement in Australia – What Constitutes Infringement?

When you register a design in Australia, you gain the exclusive right to control how that design is commercially used. This includes preventing others from making, selling, importing, or using products that copy or closely imitate your design. But what exactly counts as infringement under Australian law? And what exemptions or defenses might apply?

What counts as design infringement?

Section 71 of the Designs Act 2003 sets out the main rules. In simple terms, infringement occurs if someone, without your permission, deals with a product that embodies a design identical to or substantially similar in overall impression to your registered design.

The infringing acts include-

• Making or offering to make a product that uses the registered design.
• Importing such a product into Australia for sale, trade, or business use.
• Selling, hiring, or otherwise disposing of the product.
• Using the product in trade or business.
• Keeping the product for the purpose of selling, hiring, or using it commercially.

This captures both direct copying and close imitation, covering not just manufacturers but also importers, retailers, and distributors who deal in infringing products.

For example, if you register the design of a new style of furniture, a competitor cannot manufacture, import, or sell chairs with an identical or substantially similar look without your consent.

The Test for infringement, i.e. Substantial Similarity

In many infringement cases, the alleged infringer often claims that their product is sufficiently different from the registered design to avoid liability. However, this is precisely where the principle of substantial similarity in overall impression becomes critical. Under section 19 of the Act, courts evaluate whether the accused design infringes by considering the overall impression it creates, rather than focusing solely on individual elements.

The assessment involves comparing both the similarities and differences between the designs, with particular attention given to the most distinctive features. Greater weight is placed on similarities in those prominent aspects, as they are more likely to influence the informed user’s perception. The informed user, in this context, is someone familiar with the type of product in question and capable of discerning subtle design variations.

The law does not require the designs to be identical. Even if there are minor differences, infringement may still be found if the overall visual impression remains substantially similar. Courts adopt a holistic approach to this analysis, avoiding a rigid, side-by-side checklist and instead focusing on how the design would be perceived in its entirety. This ensures that the evaluation reflects real-world understanding and consumer perception.

Time limits for infringement claims

Section 71(4) provides that infringement proceedings must be started within six years from the date of the alleged infringement. This time limit is strict, so owners need to act promptly once infringement is discovered.

Exemptions to Infringement

The Act also recognizes situations where conduct that looks like infringement is legally permitted. These exemptions are important for businesses to understand, both to know their rights and to avoid unnecessary disputes.

Prior Use under section 71A

If a person was already using, selling, importing, or preparing to use a design that is identical or substantially similar before the registered design’s priority date, they may continue doing so without infringing.

This protects businesses who were genuinely using a design before someone else registered it. However, the defense does not apply if the design was derived from the registered owner, unless the information was publicly available with the owner’s consent.

Rights under prior use can also be transferred or sold to others.

Repairs under Section 72

A special exemption applies to repairing complex products, such as cars, appliances, or machinery. If a component part of a product is replaced purely to restore its original overall appearance, this does not infringe the registered design.

For example, replacing a damaged car bumper with one that matches the original design is not infringement. This exemption ensures consumers can access spare parts and repairs, rather than being locked into one supplier.

The burden, however, lies with the person asserting the repair exemption. If challenged, they must prove the use was genuinely for repair and not for making and selling new products.

Infringement Proceedings

Only certain parties can bring infringement proceedings under section 73, i.e. the registered owner of the design or an exclusive licensee (with the owner joined as a party).

That said, you cannot sue for infringement unless the design has been formally examined by IP Australia, and a certificate of examination has been issued. This ensures that only certified designs, i.e. those confirmed to be new and distinctive, can be enforced in court.

A defendant in infringement proceedings can also bring a counterclaim for revocation of the design, arguing it should not have been registered in the first place.

Remedies for Infringement

If infringement is proven, courts have a wide discretion under section 75 to award remedies. The main options include-

• Injunctions, i.e. orders, preventing further infringement.
• Damages, i.e. compensation for financial loss suffered.
• Account of profits, i.e. requiring the infringer to hand over profits made from the infringement.

In some cases, additional damages may be awarded, particularly where the infringement was flagrant, deliberate, or caused significant harm.

There are also safeguards for defendants. For example, if the infringement occurred before the design was registered, or if the infringer was genuinely unaware of the registration despite taking reasonable steps, the court may reduce or refuse damages.

To strengthen enforcement, marking products or packaging with the registered design number creates prima facie evidence that others were aware of the registration.

For design owners, understanding infringement is critical because it empowers you to protect your intellectual property and take decisive action against unauthorized use. Whereas, for businesses, knowing the boundaries of infringement helps avoid costly disputes and ensures compliance when developing new products.

Work with us

Design rights are valuable assets. In industries where appearance drives consumer choice, such as fashion, furniture, consumer electronics, or automotive parts, small differences in design can have big commercial consequences. Registering your design gives you legal backing to protect those investments.

At our firm, we help applicants secure design registrations and provide practical strategies for protecting and enforcing them. If you believe your design rights are being infringed, or if you want to ensure your new product doesn’t breach someone else’s rights, professional guidance can make all the difference. So, contact us now for a free consultation.