The registration of designs in Australia are a form of intellectual property protection associated with the visual appearance of an items with commercial or industrial significance. Rights in designs are obtained by registration under the Designs Act 2003 (Cth) (Act). Once registered the owner has exclusive rights to use the design, licence its use to others or sell it.
So just what is a design?
Section 5 the Act defines a product’s design as the overall appearance of the product resulting from one or more of its visual features. The product being subject to the design may be manufactured, handmade or a component of a more complex product, section 6 of the Act. Visual features are further defined in section 7 of the Act as including the shape, configuration, pattern and ornamentation of the product, but not the feel of the product, the materials used in the product, or any infinite dimensions of the product. However, it is not necessary that the visual feature serve any functional purpose.
What is a registrable design?
In order 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, section 15(1) of the Act. In this definition:
- the prior art base for a design consists of designs publicly used in Australia, designs published within or outside Australia, and design applications with an earlier priority date, section 15(2) of the Act; and
- the priority date of a design is usually the filing date of the design application, section 27 of the Act.
Section 16 of the 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.
In assessing whether or not a design is substantially similar, the design will be considered with reference to the state of development of the prior art base and the freedom of the creator to innovate, however, greater weight will be given to the similarities between the design than to the differences, section 19 of the Act.
The standard to which this assessment is conducted is to what is known as the ‘informed user’, that is, a person who is ‘reasonably familiar with the nature, appearance and use of products’ to which the design applies, Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743 [57]-[71].
Due to the requirement of a design being new and distinctive, designs should not be publicised until they are registered. However, in certain circumstances, the fact that the design has been publicised or exhibited will not be considered during an assessment of whether or not it is new or distinctive, section 17 of the Act and regulation 2.01 of the Designs Regulations 2004 (Cth). Similarly in certain circumstances, a design will not be treated as something other than new and distinctive just because copyright exists over some artistic work used in the design, section 18 of the Act.
How are designs registered?
The process for applying for design registration is outlined in Chapters 3 to 5 of the Act. In summary, the applicant must first identify the design and prior art base, and then must compare the design to the prior art base to determine whether the design is new or distinctive. Once registered a design can be certified. Certification is required before infringement proceedings can be filed, section 73 of the Act.
The initial registration of a design is for five (5) years from the filing date of the design application in which the design was first disclosed, Section 46 of the Act, and may be renewed for a further five (5) years pursuant to section 47 of the Act.
Who is the owner of a registered design?
Generally the registered owner of a design will be the person who created the design (Designer), section 13(1)(a) of the Act, however, other persons who may be the registered owner or an additional owner include:
- the employer of the Designer;
- a person who derives the title to the design; or
- a legal representative of the Designer.
The registered owner of a design has the exclusive right to make, import, sell, use, and keep a product in relation to which the design is registered, and to authorise another person to do any of these things, section 10 of the Act.
How is a design infringed?
A person infringes a registered design if, during the term of registration, they exercise any of the exclusive rights (see above) of the registered owner, section 71(1) of the Act.
Infringement proceedings must be started within six (6) years from the day on which the alleged infringement occurred, section 71(4) of the Act.
Relief for infringement may include an injunction, and at the option of the plaintiff, damages or an account of profits, section 75 of the Act.
Links and further references
Cases
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2016] FCAFC 90
Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743
Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179
Legislation
Further information about registered designs
If you need assistance to protect your designs and enforcing your right in a registered design, contact us for a confidential and obligation-free discussion:
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
Disclaimer
This article contains general commentary only. 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.
Related insights about registered designs
-
What is a registered design – Australian law
Learn more about registering a design in Australia and the legal rights associated with it. Understand the criteria for successful registration, the legal owner of the design, and infringement proceedings.
