Registered designs

At Dundas Lawyers^®, we understand identifying and protecting registered designs can be critical for business success.  Dundas Lawyers^® has experience identifying, enforcing and defending registered designs and has acted for businesses inside and outside of the Courtroom.

What is a registered design?

Section 15(1) of the Designs Act 2003 (Cth) (Designs Act) provides that, for a design to be registered in Australia, it must be “new and distinctive” when compared to the prior art base as it existed before the priority date of the design.  To determine if a design is “new or distinctive”, section 16 of the Designs Act states that a design is:

• new unless it is identical to a design that forms part of the prior art base; and
• distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base.

According to section 15(2) of the Designs Act, the prior art base comprises of designs that have been publicly used or published in Australia and design applications with an earlier priority date.  Section 27 of the Designs Act provides that the priority date of a design is usually the filing date of the design application.

Sections 5 and 7 of the Designs Act state that a design is the overall appearance of a product that stems from one (1) or more visual features.  As such, the registration of a design will safeguard a products visual feature of shape, configuration, pattern, or ornamentation.  While, the identified visual features need not serve a functional purpose, the design must have a distinctive visual appeal.  As identified in section 7(3) of the Designs Act, the following do not constitute a visual feature of a product:

• the feel of the product;
• the materials used in the product; and
• a product that has one (1) or more indefinite dimensions.

Who is the owner of a registered design?

When determining who is entitled to be registered as the owner of a design, section 13(1)(a) of the Designs Act provides that the owner will generally be the person that created the design (Designer).  However, other persons that may be entitled to be registered as the owner or additional owner include:

• the employer or commissioner of the Designer if the design was created in the course of employment, or under contract;
• a person who derives the title to the design by devolution by will or by operation of law; or
• a legal representative of the Designer.

In accordance with section 10 of the Designs Act, once registered, the owner will have the exclusive right to make, import, sell, use, and keep the design.

Requirements for registration

To receive protection under the Designs Act, requirements include a formal application for registration before rights are obtained.  The process for applying for design registration is outlined in Chapters 3 to 5 of the Designs Act.  In summary, the process requires the applicant to first identify the prior art base and if it existed before the priority date.  The design must then be compared to the prior art base and a Certificate of Examination will be issued if the design is found to be “new and distinctive” and not “substantially similar in overall impression“.  However, the registration will be revoked if the design fails to meet these requirements.  As provided by section 73 of the Designs Act, certification is required before any potential infringement proceedings can be filed.

How long does protection last for a registered design?

As stated in section 46 and 47 of the Designs Act, registered designs in Australia will have an initial five (5) year registration term from the filing date of the design application.  On payment of a renewal fee, the term may be extended for a further five (5) years.  

Disclaimer
This page contains general commentary only about the protection of registered designs.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Why choose Dundas Lawyers^®?

Having exerted Blood Sweat and Years^® since April 2010 we are the team you want on your side for the long term to act as the ‘bodyguard’ for your business to protect its intellectual property or to stand up for your rights.  Some of the reasons client’s choose Dundas Lawyers^® include:

• our Uncommon business acumen;
• our Uncommon expertise in transactional, compliance and litigious matters;
• our Uncommon expertise forensic case preparation;
• our Uncommon customer focus;
• the fact that we don’t just know law, we know business!
• how we leverage our Uncommon Nous^® to provide client solutions.

Considering getting a lawyer to advise your business?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in registered design protection please phone our team on either 1300 386 529 or 07 3221 0013.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au

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