New Australian Design Laws

21 April 2010

The registration of a design is governed by the Designs Act 2003(Cth),(“the Act”) which came into effect on 17 June 2003.

What does the registration of a design protect?

The registration of a design, in relation to a product, protects the overall appearance of the product resulting from one or more visual features of the product such as shape, configuration, pattern and ornamentation, and gives the owner certain exclusive rights within Australia and during the term of the registration in respect of the registered design. These rights include, amongst others:

  • making the product in relation to which the design is registered;
  • importing such product into Australia for trading purposes;
  • selling the product; and 
  • using the product for the purpose of trade.

When is a design registerable?

A design however in order to be registerable needs to new and distinctive when compared to earlier designs that are publicly used in Australia or published anywhere in the world. The design must not be identical or substantially similar in overall impression to an earlier design publicly used in Australia or published anywhere in the world.

Applying for a design

A design application is required to be filed at the Designs Office, and after the application has been made it will undergo a formalities examination to assess whether all necessary information and documents have been supplied prior to being registered. However it is important to note that an owner will not be able to enforce their registered design where infringement has occurred until the design has passed substantive examination and a Certificate of Examination has been issued by the Designs Office.

If you are considering registering a design, then should you ensure that prior to the filing of the application, that the design is not published or used, in order to protect the newness or distinctiveness of the design.

Term of Design Registration

If successfully registered, a design can remain registered, for a period of up to 10 years from the filing date, provided that renewal fees are paid.

Infringement


The making, importing, selling, offering to sell, hiring or using for trade a product in relation to which the design is registered without the licence or consent of the owner, subject to any permitted defences under the Act, can constitute the infringement of a registered design, and permit the owner to take action against the alleged infringer.

Design and copyright law overlap

There is some overlap between copyright and designs within Australia however, generally while copyright may protect some unregistered designs in limited circumstances, copyright protection is excluded for artistic works if a corresponding design (that is, a three dimensional reproduction of the artistic work) is either registered as a design or industrially applied. The law however in respect of this is complex and each individual circumstance will need to be considered in light of the recent introduction of the Designs Act and consequential amendments to the Copyright Act 1968 (Cth).

Patent Protection

We highlight that patent protection is different to design protection. While design registration protects the appearance of a product, patent registration seeks to protect the operation of the product, and it is possible to have both design protection and patent protection for the same product.

Further Information

As copyright protection will be limited, it is now important for intellectual property owners to seek advice as to the protection of their designs, and seek registration of their designs in Australia. If you require any further information regarding design protection, or the protection of your other intellectual property, please do not hesitate to contact Felicity Cara-Carson of our office.