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).
Neither a power of attorney nor a certified copy of the basic application is required; however, these may be requested after filing (although it would be quite rare).
Within about two to six months from 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.
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 is classified according to the nature of the product. Consideration is also given to whether the application contains more than one 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 third party that filed the request. The third party 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 concerning certain decisions and to oppose amendments or time-extension 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 requested, or both.Registration time frame
What are the registration time frames?
Registration of an Australian design application may be requested on filing or at a later date. If a request for registration is not filed within 6 months of the priority date, and the application has not been withdrawn, the request is deemed to have been made and the application will proceed to registration.
Following a request for registration, an Australian application for design registration will typically proceed to registration within about two months.
However, a registered design cannot be legally enforced unless it is examined and certified (ie, the registered design passes examination and is 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.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.