Who can apply for and own a design?
The applicant or owner of an Australian design registration can be:
- the designer;
- a person who contracted the designer to create the design;
- the employer of the designer;
- an assignee of the designer or someone who derives title through devolution by will or operation of law; or
- the legal personal representative of a deceased person mentioned above.
The applicant of a design registration must be a legal person (ie, a body politic or corporate, as well as an individual).
Typically, proof of ownership is not required to file an application for design registration.Scope
What may and may not be protected?
An Australian design registration protects the visual appearance of a product arising from the features of shape, configuration, pattern and ornamentation of the product.
The following can be protected as an industrial design in Australia:
- a thing that is manufactured or handmade;
- a component part of a complex product (spare part) if it is made separately from the product;
- a thing with indefinite dimensions; and
- a kit that can be assembled into a product.
Although there is no exclusion to the registration of spare parts, there is an infringement exemption under section 72 of the Designs Act 2003 that allows a person to use a product, which is a component part of a complex product, for the purposes of the repair of the complex product to restore its overall appearance in whole or in part.
The provisions of section 72 are intended to:
- provide to aftermarket parts suppliers a defence against infringement of registered designs that cover spare parts; and
- encourage greater competition in the spare parts market.
It is worthwhile registering designs of spare parts if they can be used to improve or enhance the appearance of a complex product since such products may fall outside the scope of the section 72 infringement exemption.
Certain designs cannot be protected, including:
- designs falling under the Olympic Insignia Protection Act 1987 or mentioned in the Crimes (Currency) Act 1981;
- designs relating to electronic circuit layouts;
- Anzac-related designs;
- scandalous designs; and
- certain designs relating to government arms, emblems, flags or seals.
What are the costs involved in registration?
The official fee for filing a design application is AU$250. Attorney fees vary between firms, but applicants can expect attorney fees of AU$700 to AU$1,200 for filing a design application with a single design.
Only a single design is allowed per application (unless the application is for a common design applied to different products) and this is enforced quite strictly. An application considered to include further designs (ie, more than one design) will trigger a deficiency notice. If an objection to further designs cannot be overcome, options for proceeding include:
- withdrawing the further designs;
- excluding the further designs from the application and filing them in one or more new applications; and
- combining the filings into a multiple application and paying additional fees.
Is there a grace period for filings?
A 12-month grace period for public disclosures of the design commenced on 10 March 2022. The grace period is not retrospective so disclosures made prior to 10 March 2022 are not covered by the grace period. Also, publications of the design by foreign design offices are not covered.
From 10 March 2022, a prior use infringement exemption was introduced for third-party use during the grace period.
Where an application is for a design corresponding to an artistic work, and where the prior publication is of the artistic work, provisions in the legislation may preclude the prior publication from being novelty destroying.