Patent and Trade Mark Attorneys Australia and New Zealand
A registered design provides the owner with a monopoly right to the overall visual appearance of a product resulting from one or more visual features such as shape, configuration, pattern and ornamentation. Design Registration in Australia is governed by the Designs Act 2003 which was introduced with the aim of providing stronger Intellectual Property rights for design owners.
Under the Designs Act 2003, a design is registrable if it is both new and distinctive when compared with the prior art base. A grace period was introduced recently regarding Australian Designs to allow owners to retain valid rights in respect of a registration despite disclosures prior to filing an application. If you have any queries in this regard, please contact us.
This requirement provides that a design must be different from any design forming part of the prior art base as defined below;
A design is considered distinctive unless it is substantially similar in overall impression to a design forming part of the prior art base as defined below;
The prior art base comprises any design publicly used in Australia, any design published in a document anywhere in the world, and any designs which have been disclosed in earlier design applications.
The Designs Act 2003 provides that when considering whether a design is distinctive, more weight should be given to similarities between the designs as opposed to differences between them. A search of existing design records is recommended prior to filing an application.
After a design application has been filed, the applicant has a 6-month period in which to request registration. If registration is requested, the design will undergo a formalities examination only and proceed to grant without undergoing substantive examination. A design is registrable for a period of 10 years from its Australian filing date with a renewal fee due 5 years after the Australian filing date. Substantive examination (the test for novelty and distinctiveness) may be requested at any time during this 10-year period to assess the validity of the Registered Design. If the design is found to be valid, it will be certified and a Certificate of Registration will issue. If the design is found to be invalid, the Registration will be revoked.
Infringement of a Registered Design occurs if a person makes, imports, sells, hires, offers to sell or hire, or uses for trade or business any product that would be considered an infringement of the Registered Design. A design owner will not be able to enforce a Registered Design by way of infringement proceedings unless the design has been certified.
Design registration is available in a number of countries and in many of these countries, the Australian filing date may be retained if foreign applications are filed within 6 months from the Australian filing date.