Australian designs law has a number of unique elements that differentiate it from jurisdictions such as the United States, Europe or Japan. Design owners may be surprised by some provisions of the Australian designs law and need to be vigilant when registering their designs. In this article we summarise some key characteristics of the Australian Designs Act 2003 and highlight the main differences with foreign jurisdictions.
Multiple designs in a single application
Whilst it is possible to file multiple designs in a single Australian design application, a separate fee is payable for each design. In effect, the Australian Designs Office treats each design as if it were filed in a single separate application issuing a separate filing receipt, design number and subsequent design registration.
This is different to other jurisdictions. In Europe for example, only a single application fee is payable in respect of multiple designs, whereas in the United States multiple embodiments of a design can be filed in the one application.
Conversely, the provisions of s 22(1)(b) of the Australian Designs Act 2003 (Cth) permit a single application (and therefore a single application fee) to be in respect of a ‘common design’ applied to more than one product. A ‘common design’ relates to those visual features which are common amongst different products on which the design is applied. For example, a common design could be in respect of a set of cutlery (the shape of the handle on a fork, spoon and knife) or the same pattern and/or ornamentation applied to both a t-shirt and shoe.
Under Australian designs law, a design will be registrable even if it includes features of shape and/or configuration which serve a functional purpose.1 In particular, there is no requirement that the design be “ornamental” unlike the provisions of United States design law.2 Essentially, this functional aspect of Australian designs most closely resembles the interpretation of functional designs in Europe in the sense that a monopoly should not be granted for a design where the functionality as dictated by the features of the design cannot be achieved through another design. However, it is still the overall appearance of the product resulting from one or more visual features which is amenable to protection under Australian Designs law and not the functional attributes (which are generally protected by a patent).
In Australia, it is not possible to explicitly “disclaim” certain features of the product shown in the representations from design protection as it is the overall impression of a design which is assessed when considering registrability (i.e. validity). This is in contrast with other jurisdictions, such as the United States, which permit the use of dotted or broken lines to exclude or “disclaim” certain visual features of the product.
It is however possible to influence the above assessment by including a Statement of Newness and Distinctiveness identifying particular visual features of the design (such as those features illustrated in continuous lines) as new and distinctive.
More information on this aspect is contained in our earlier article here.
Unlike European design law where the publication of a design can be deferred for a period of up to 30 months3 , there is no formal procedure to delay publication of a design to a designated date in Australia. However, informal steps can be taken to unofficially delay publication of the design to some degree. Please contact us for more information.
Another notable difference between Australia and foreign jurisdictions such as Europe, the United States and Japan, is the absence of a grace period in Australia following general public disclosure of a design. During a grace period, protection can still be sought, without that disclosure likely being considered for prior art purposes. However, there are circumstances under which prior publication may be excluded as prior art, as provided for in Section 18 of the Designs Act 2003 (Cth).
For more information on these circumstances, please see our previous article here.
An Australian design typically proceeds to registration within a matter of weeks after a request is made as the design application is not subjected to substantive examination before registration.
Practically speaking, this means that there is no formal procedure to oppose the registration of a design in Australia. However, there are certain actions that can induce an opposition-like setting in respect of designs as was highlighted in the Australian Designs Office decision of Alfred Karcher GmbH v Jinping Zhu4 . In this regard, the actions to take in Australia closely align with the process for an application of invalidity of a registered European design. In particular, a third party may request examination of the registered design5 and can provide relevant material to disclaim the newness and distinctiveness of the design.6 In doing so, and by virtue of the provisions of Section 5 of the Designs Act 2003 (Cth), the third party becomes a “relevant party” and is thereby granted a “reasonable opportunity to be heard” if a ground for revocation of the registration of the design has not been made out.7 Evidence in support and evidence in answer may then be submitted in a similar manner as is typically prepared for patent oppositions in Australia.
The process as outlined, therefore, provides a valuable opportunity for those third parties seeking to prevent certification of a design and a reminder to those with registered designs to be vigilant. We can assist you throughout each stage of the process.
Term of protection
In Australia, the term of registration of a design is 5 years from the filing date of the design application and can be extended for an additional 5 years following payment of a single renewal fee, totalling to a maximum term of 10 years.8 This is substantially shorter than the 25-year maximum term for a registered European Community design9 and 15 years from the date of grant in the United States.10