Registering a Design in Australia

Following the entering into force of the Designs Act 2003 on 17 June 2004 the Australian design system operates on a similar basis to the EC/UK system.

No substantive examination of whether a design meets the requirements for registration is undertaken. It is only examined to check the formalities i.e. the procedural requirements have been fulfilled. Although in contract to the EC/UK system there is provision for an applicant to request further examination on payment of an additional fee.

There is also no requirement that the design must have ‘eye appeal.’

A design is defined as the overall appearance of a product, visual features such as the shape, configuration, pattern and ornamentation which, when applied to the product, give it a unique appearance.

In order to qualify for registration a design must be capable of satisfying the following two requirements:

1. It must be new, meaning the design (or one very similar) has not been publicly used in Australia nor has it been published in a document within or outside Australia.

2. It must be distinctive meaning it should be substantially different in overall appearance to other designs already in the public domain.

The main difference between the Australian and EC/UK systems is that it does not seem to allow a grace period prior to application consequently if the design is disclosed to the public within Australia or outside prior to application the registration may be defeated. The only exception to this is where an application has been filed in another country prior to application in Australia.

In such cases a six month period is allowed for the subsequent application. However if the design had been disclosed prior to the initial application, as is permissible under other countries systems, this may still defeat an application/registration in Australia regardless of the above six month rule.

Even though examination of compliance with the above requirements does not form part of the basic registration procedure, it is ossible for third parties to request such an examination or to challenge the validity of a design in infringement proceedings on the basis of non-compliance with the above. Therefore it is in the applicant’s interest to ensure that its design conforms to these as far as possible.

The duration of the right is ten years subject to payment of a renewal fee after the first five years.

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