March 16, 2018 | Moira McKenzie

  1. Registering your design

In Australia, registered designs are granted by IP Australia under the Designs Act 2003 (Cth). For a design to be registered and legally enforceable it must be determined as ‘new’ and ‘distinctive’. For a design to be ‘new’ it cannot have been published anywhere in the world or publicly used in Australia before applying to register it. ‘Distinctive’ means it must not be substantially similar in overall impression to any design previously disclosed anywhere in the world. Once you own a registered design you have the exclusive legal right to use, licence or sell the particular design within Australia.

Key points to consider when registering a design in Australia:

  • After your design is filed, only very limited changes are allowed;
  • If your design is registered, the protection given by registration takes effect from the priority date, which is usually the filing date;
  • Your application will lapse if you don’t request to register or publish your design within 6 months from the priority date;
  • You can only claim that the design is registered once you have received a certificate of registration from IP Australia; and
  • A design is not legally enforceable until it has been registered, examined and certified.
  1. Design Registration Process

There are six main stages in the design registration process in Australia:

  1. The design application is filed with IP Australia;
  2. A request for the design to be registered is made with IP Australia;
  3. IP Australia complete a formalities check (this can take up to 3 months);
  4. Once the formalities check is successful and/or any issues raised are resolved, the design becomes registered and the applicant is issued a priority date for registration;
  5. Once the design is registered, the applicant can request that IP Australia examine it with the intention of having it certified (the examination can take up to 3 months); and
  6. IP Australia will examine the design and either judge it to be new and distinctive or issue an adverse report, which would need to be successfully addressed before certification can occur.

 

  1. Registration

If the application passes the formalities check, the design will become registered, advertised in the Australian Official Journal of Designs, and made available for searching in the ADDS database. Once your design is registered you will have protection for the visual appearance of your product and exclusive rights to commercially use, license or sell the design.

  1. Examination & certification

Once a design has been registered it can be examined and a request for certification can be made. If the examination results in certification then the design right is legally enforceable against third parties. The main purpose of examination is for IP Australia to determine whether there are any earlier, similar designs to the one you wish to protect. If the examiner finds an earlier design which looks too similar to yours, your design may not pass examination. It does not matter who owns the earlier design.

An examination by IP Australia will result in either:

  1. A certified design right (a certificate confirming a legally enforceable right to the design); or
  2. An adverse report setting out the issues that must be addressed before a design can be registered.

If an issue is raised in an adverse report, the issue must be addressed within 6 months. If you are unable to adequately address the issue(s) raised in an adverse report within 6 months, registration will be revoked by IP Australia. If the design registration is found not to be valid, the IP Australia Registrar may revoke it.

  1. Duration & enforcement

Registration protects a design for five years from the priority date, which is the date the application was filed, and can be renewed for a further five years. If you do not renew your design, registration will cease. Once the design registration has ceased it passes into the public domain and is free for anyone to use.