Procedures

Application

What is the application process?

The application process for an Australian design registration commences with the filing of an application that includes:

  • details of the applicant;
  • details of the designer;
  • a title or product name;
  • a set of representations; and
  • convention details (if any).

A power of attorney is not required, nor is a certified copy of the basic application; however, this may be requested after filing (although it would be quite rare).

After filing, the application is subjected to a relatively straightforward formalities check to ensure enough information has been provided. If no issues are raised during the formalities check (or all issues are overcome), the design proceeds to registration. It usually takes approximately three months from filing before a design is registered.

The design registration will enjoy an initial five-year term from the Australian filing date which may be extended for a further five years upon payment of a renewal fee.

Before a design registration can be enforced, it must be examined and certified (ie, considered new and distinctive). Examination is optional and can be requested any time during the term of a design registration. Examination typically occurs within three months of it being requested, and any issues raised during examination generally must be overcome within six months. 

Examination and appeals

How are the examination and appeals procedures conducted?

During a formalities check, an application for design registration will be classified according to the or each product and consideration is given to whether the application contains one or more design. The formal requirements for the application form are also reviewed for compliance. If the formalities check raises no issues (or all issues are overcome), the application will proceed to registration.

Examination of a design registration is voluntary and can be requested by the registered owner or a third party at any time. If a third party requests examination, they must pay half the examination fee and the registered owner must pay the other half. If the registered owner does not pay the other half, the design registration may cease.

A design registration must be examined and certified (ie, the design passes examination and is considered new and distinctive) before it can be enforced. Assertions of infringement of an uncertified design registration should be avoided; such assertions would likely constitute unjustified threats under the Designs Act 2003.

Following examination, an Intention to Certify issues from the delegate to the registered owner of the design, any person entered as having an interest in the design and, if a third-party request for examination was filed, the person who filed the request. That person will be given an opportunity to be heard by filing a request within a set period (typically one month) if they disagree with the delegate’s decision.

Opposition

What are the opposition rules?

The Designs Act 2003 contains provisions for an interested party to be heard in relation to certain decisions and to oppose amendments or extension of time requests.

There is no formal opposition process defined in the relevant legislation, and the registrar determines the practice and procedure to be followed. However, the typical process is that after filing a notice of opposition, the matter proceeds to a hearing, with both parties having opportunities to make submissions. The hearing may be based on written submissions, or an oral hearing may be requested.

Registration time frame

What are the registration time frames?

An Australian application for design registration will typically proceed to registration within three months of filing.

Removal from register

In what instances does removal from the register occur?

Apart from challenges to ownership of the design based on entitlement issues, removal from the register typically occurs following examination if the design is not considered to be new and distinctive.

Law stated date

Correct on:

Give the date on which the information above is accurate.

16 November 2020.