27th June 2018
In Australia, registered designs protect the overall appearance of a product resulting from its visual features. The visual features of a product include the 3-dimensional features of shape and configuration of a product, and the 2-dimensional features of pattern and ornamentation applied to a product. It is important to bear in mind that registered designs do not protect the feel of the product or the materials used in the product.
In order for a design to be a registrable design, it must satisfy 2 criteria under the Designs Act 2003 (Cth) – the design must be new and distinctive when compared with the prior art base for the design as it existed before the filing date of the design application:
1. Designs are ‘new’ unless they are identical to a design in the prior art base for the design.
2. Designs are ‘distinctive’ unless they are ‘substantially similar in overall impression’ to a design in the prior art base for the design.
The prior art base for a design consists of:
• designs publicly used in Australia;
• designs published in a document within or outside of Australia; and
• designs that have been disclosed in an earlier filed design application.
There are a number of factors that a Court will consider when deciding whether a design is substantially similar in overall impression to a design in the prior art base, including:
• Giving more weight to the similarities than the differences between the designs;
• Considering the state of development of the prior art base for the design; and
• The freedom of the creator of the design to innovate.
The person who created the design is entitled to be recorded as the registered owner of the design and more than one person may be recorded as the registered owner of a design.
Term of protection
Australian designs can be registered for a maximum of 10 years. Designs are registered for an initial period of 5 years from the date of filing the application and can be renewed for a further 5 year term on payment of renewal fees.
The application process to register an Australian design is relatively straightforward and inexpensive. The applicant must submit a number of representations showing the various perspective views of the design (ie front, back, side, top, bottom etc). The representations can take the form of line drawings or photographs. Both can be submitted at the time of filing the design, but the applicant will need to choose prior to registration whether it relies on the line drawings or photographs as the design cannot be registered for both. In addition to providing its full details, the applicant also needs to identify the product to which the design relates and may also elect to file a statement of newness and distinctiveness identifying particular visual features of the design as new and distinctive.
At the time of filing the design application, the applicant can elect to register the design, have the design published or none of the above. If the applicant elects not to take any action at the time of filing, it will have 6 months from the date of filing the application to seek registration or publication of the design. Once registered, the rights of registration apply from the filing date of the design.
Once the design has been filed, IP Australia will review the application to ensure that it complies with all filing formalities. A registered design will only be substantively examined if the applicant requests examination of the design – which is required in order to enforce the design and threaten infringement of the registered design in Australia.
When to file
It is important to be aware that there is no grace period for filing design applications in Australia. Designers must therefore be careful not to inadvertently destroy the novelty of their designs by accidentally disclosing the design prior to filing an application to register the design – this could include by releasing the design in store, publicising the design on social media, or allowing the design to be featured in a magazine or online.
The registered owner of the design has the exclusive right to do various acts in relation to the design, including to make, offer to make, import, sell or offer to sell any product in relation to which the design is registered and to authorise others to do any of these acts during the term of registration of the design. A third party will infringe a registered design if it does any of these acts without the registered owner’s licence or authority, in relation to a design that is identical to or substantially similar in overall impression to the registered design. The remedies available to a registered owner for infringement of a registered design include an injunction, damages, including additional damages, or an account of profits. Additional damages can be awarded by the Court having regard to the flagrancy of the infringement and any other relevant matters.
Christine assists clients to strengthen their intellectual property portfolios by devising global clearance and filing strategies and providing strategic commercial advice on the enforcement of their intellectual property rights.
Shehana is counsel in our Intellectual Property practice, based in Sydney. She has significant experience advising on IP strategies, exploitation and enforcement. Her experience includes negotiating and drafting licensing, assignment and broader commercialisation agreements, managing trade mark portfolios, advising on trade mark protection and prosecution, advising on copyright exploitation, prosecuting design registrations and conducting IP due diligence.
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