Registered Designs in Australia
A registered design protects the appearance of an article, for example the shape of a new chair or pen. Designs are also available for new patterns or ornamentation. The owner of a registered design in Australia has the right to prevent others from using that design in Australia.
Registered designs complement other forms of intellectual property (IP), such as patents for inventions, copyright for artistic works, and trade marks for brands.
In Australia, it is only possible to obtain a registered design for a new design. It is crucial that there is no publication, sale or use of the product before a design application is filed.
Australia therefore differs from other jurisdictions, where there is a limited grace period. For example, the European Union and the United States have a 12-month and 6-month grace period respectively. In those jurisdictions, an applicant’s own activities during the grace period will not be taken into account for determining if the design is new.
Applying for a registered design
A design application is filed with a set of drawings showing the article in detail. This typically includes views of each side of the article with one or more isometric or perspective views.
It is possible to exclude some details from the design, for example by showing them in dashed lines. This means the design protection is not limited to designs with those details.
The design application is examined for formalities by IP Australia, and will be registered as soon as this is completed. This process generally takes a few weeks.
However, IP Australia does not automatically perform substantive examination to determine if the design is novel. This must be separately requested before the design can be enforced against another party. Many designs are therefore never substantively examined, as this is typically only done when infringement is considered likely.
Registered design protection outside of Australia
To obtain design protection outside Australia, design applications are then filed in each jurisdiction where protection is desired. Common jurisdictions include New Zealand, the United States, the European Union, China, and Japan.
In most jurisdictions, if these applications are filed within 6 months of the Australian filing, the applicant is entitled to retain the benefit of that filing date. This means the foreign applications are treated as if they were filed at the same time as the Australian application when considering if the designs are new.
Each foreign application will be examined at the national intellectual property office of each jurisdiction before a design is registered in that country. Some countries examine only for formal matters while others conduct a full examination process.
Maintaining a Registered Design
Designs in Australia last for 10 years from the date of filing. A renewal fee is due at 5 years.
In other jurisdictions, the term of protection varies. For example, New Zealand registered designs last up to 15 years and European Union registered designs last up to 25 years.
Once a design registration expires, or is allowed to lapse by not paying a renewal fee, others are free to make, use or sell the design.
Copyright and Unregistered Design Rights in Australia
In Australia, there is very limited copyright protection for three-dimensional works. There will generally be no copyright protection after the design has been “industrially applied” (usually from the production of the 50th article).
Some countries offer more robust protection. For example, New Zealand offers copyright for three-dimensional works for 16 years from industrial application, and the European Union provides a 3-year term for unregistered design rights.
Want to Know More?
Ellis Terry are experts in Australian registered designs. Please contact us if you have any questions or would like to pursue a registered design in Australia.