Five things to keep in mind when pursuing registered design protection in Australia

Date: 2013-09-20
Author: Stuart Irvine

1)     Illustrated features cannot be entirely disregarded.

2)     A design must be in respect of a self-contained product.

3)     Designs are published relatively quickly – typically 8 to 10 months from the earliest priority date.

4)     No generic grace period exists to exclude an applicant’s own prior disclosure from the prior art.

5)     Different embodiments of a design are almost always different designs.

Illustrated features cannot be entirely disregarded

Validity and infringement under Australian law come down to the question of whether a registered design is substantially similar in overall impression to another design (a piece of prior art in the case of validity or a product in the case of infringement).

Consequently, even if features of a registered design are illustrated in broken outline they cannot be entirely disregarded from consideration.

At best, the relative importance of features can be subordinated. When assessing substantial similarity in overall impression the Australian Act provides that particular regard must be had to any visual features identified in a Statement of Newness and Distinctiveness (which can be filed with the design application).  Accordingly, and by way of example, stating that particular regard is to be had to features illustrated in solid outline serves to de-emphasise features illustrated in broken outline.

A design must be in respect of a self-contained product

An Australian design must be in relation to a product. “Product” is a relatively broadly defined term, but only covers things that are separately made.

Consider, for example, a wristwatch that is designed and manufactured such that the band can be detached and reattached from the face. In this case the “product” could be the watch as a whole (being a complex product with replaceable component parts), the band alone, or the face alone (the band and face both being separately made component parts which can be disassembled/ reassembled).

On the other hand, for a watch that does not permit the (non-destructive) removal of the band the only product is the watch as a whole. As the band and face are not separately made component parts that can be disassembled and reassembled, they would not be products in their own right. 

This requirement is relevant to both the title of a design application and the representations. In the example of the integrally formed watch above, even if the desire was to protect the appearance of the watch face alone:

  1. The title should be “watch”, not “watch face” (the face in this instance not being a product as defined by the Australian Designs Act).
  2. The representations should show the entire watch, though the best approach would likely be to depict the band in broken outline and draw attention to the face/solid outline features in a Statement of Newness and Distinctiveness. As discussed above, however, this is not a perfect solution. 

Quick publication

Australian design applications are published quickly – typically 8 to 10 months from the earliest priority date, even if delaying tactics are implemented.

This is a consequence of three aspects of the Australian design system:

  1. Registration of a design application must be requested within 6 months of the earliest priority date;
  2. Registration is based on a formalities examination only, which left to its normal course generally takes only a few months; and
  3. A design is published when it is registered. 

If a formalities objection arises during the examination a two-month registration deadline is provided which, effectively, provides a limited publication delay. 

It should also be noted that although a design is registered on the strength of a formalities examination only, this does not provide an enforceable design right. For a design to be enforceable substantive examination must be requested and the design certified. Requesting substantive examination is optional and can be done at any time during the life of the design.

No generic grace period

The Australian Designs Act does not provide a generic grace period for applicants who publish their design before filing an application.

This is at odds with Australia’s Patents Act that does provide a 12 month grace period for self-publication.

Australian designs law provides two “simple” circumstances where prior publication of a design can be ignored:

  1. Publication with the owner’s consent at an officially recognised international exhibition; and
  2. Publication without the owner’s consent. 

In each of these cases the publication will only be ignored if a design application is filed in Australia within 6 months of the publication.

A publication with the owner’s consent can also be disregarded where the publication is by use of an artistic work to which the design corresponds. Such use can, however, only be disregarded if it did not involve commercial exploitation of products to which the design had been applied industrially.  This is a complex exception, and if potentially relevant advice should be sought.

A final point to note in this regard is that the issue of a generic grace period for designs has been raised as an area for consideration in the designs system review currently being undertaken by the Australian Government Advisory Council on Intellectual Property. It may be the case that this review leads to legislative change in this regard. 

Different embodiments are different designs

Under Australian law, different embodiments of a design will each be different designs in their own right. This is irrespective of how minor the visual differences between alternative embodiments are.

Although a single application can include multiple designs, each design in the application is ultimately assigned its own application/registration number, and attracts its own official fee.

The exception to this is where a design is a “common design” in relation to more than one product. A common design in relation to more than one product could, for example, be a common design applied different cutlery items. In this case each item (e.g. knife, fork, spoon) would have a different appearance, but to the extent possible would share common visual features with the other cutlery items.