A recent case has again demonstrated that Australian product design protection law is notoriously complex, and that designers should seek expert advice on design protection before putting a product on the market.
A UK homewares manufacturer, which had designed a chopping board and bowl, had registered the designs for its products in the EU. Its designs were also automatically protected in the UK under the EU unregistered design right. The UK company then started selling its products into the Australian market, on the belief that the protection it had secured in the EU would protect the designs in Australia.
However, an EU design registration is only effective in the EU, and does not provide any protection for a product design in Australia. Furthermore, while copyright does protect some product designs in many other parts of the world (including in New Zealand), copyright protection is lost in Australia where a product is "industrially applied" – that is, where a number of copies are made (usually around 50, but this can be lower) with the intention of offering them for sale.
As soon as the UK company discovered its product designs were unprotected in Australia, it tried to file a late Convention priority application for its designs in Australia. This would have ensured the Australian applications were treated as if they had been filed on the same date as the EU design registrations and avoided any difficulties with prior disclosure of the designs through Australian sales or overseas documentary publication in the meantime. However, the Designs Office refused the applications, holding that the UK company's view that its designs were already protected in Australia was not a sufficient excuse to justify late Convention priority applications.
Because design registrations can only be obtained for products which are "new" in the sense of not having been used in Australia or documented anywhere in the world, this meant the UK company could not obtain a valid Australian design registration after discovering its products were unprotected, as the products had already been sold in Australia, and documented in the EU design registrations, and were therefore not "new". And because copyright law in Australia does not protect designs which have been "industrially applied," copyright protection for the product designs had been lost. The net result was that its product designs were completely unprotected, and other traders could copy them freely.
Australian design protection law has many traps for new and overseas-based players. The safest approach continues to be to seek local legal advice on product protection before launching a product. In particular, designers should file design applications before a product has been put to market in all countries of interest, as even a single advertisement for a product overseas may be sufficient to invalidate a later-filed design application in Australia.