Business Law

Registering a design of a product in Australia

Published in: August 2017

A lot of time, effort and money is usually dedicated to designing a product, therefore, it’s important that designs are able to be protected by intellectual property laws. When a design has been developed, registration is essential to ensure that your design is protected.

Making an application

When registering a design, one or more people may be able to file an application and when an application is filed, it must specify the person or persons who are entitled to be entered into the Register as the registered owner or owners, as outlined in s 22 of the Designs Act 2003 (Cth) (the Act).

The design application may be in respect of one design relating to one product or several products. Additionally, the application may also be in respect of multiple designs relating to one product or several products if they belong in the same classification category, as outlined in s 22 of the Act.

Examination of a design

When submitting a design registration at the initial stages, the only thing that will be checked for is whether the formal requirements have been complied with. However, a more substantive examination will be conducted after registration upon the request of a person that can include the owner of a registered design, a third party or the court, or on the initiative of the Registrar, as outlined in s 63(1), (2) of the Act. However, infringement proceedings may not be bought until the relevant design has undergone substantial examination, and a certificate of examination has been issued, as stated in s 73(3) of the Act.

Filing the application

When submitting a design application, it must meet the minimum filing requirements found in the Designs Regulations 2004 (Cth) (the Regulations), and includes representations of the design disclosed in the application.

In the event that the application fails to meet the minimum filing requirements, the applicant will be informed by the Registrar of Designs via written notice, as noted in s 24(2) of the Act. Alternatively, if the application does fulfil the minimum filing requirements, the person will also be informed of the Registrar of this, and the details will be published (s 25).

The priority date of a design that meets the minimum filing requirement is the filing date of the design application, or prior to the filing of the design application, an application for protection of the design had been made in a Convention country in accordance with the Regulations within the previous six months of the date on which the application was made (s 27).

Convention countries are signatories to the Paris Convention for the Protection of Intellectual Property 1883, and are also full members of the World Trade Organisation.

Registering a design

Registration of a design will occur upon the receiving of a disclosed design in a design application, and the Registrar deems that the application satisfies the formalities outlined within the Regulations, and is not a design that the Registrar must refuse under the provisions of the Act.

The matters to be considered in relation to the formalities check as outlined in the Regulations can be found in reg 4.04 if the application is for one design, or reg 4.05 for an application that is for more than one design. The classes of designs that the Registrar must refuse under s 43(1) are prescribed in reg 4.06, and includes designs of medals or any design appropriating the term “Anzac” or the Arms or the flag of the Commonwealth, State or Territory, or another country should be refused.

Once registration occurs, the following classes of persons will be entered into the Register as the registered owner of the design:

·         the creator of the design (the designer);

·         the employer of the designer if the design creation was in the course of the designer’s employment, subject to any contrary agreement;

·         the person who commissioned the design if the design was produced on commission, subject to any contrary agreement;

·         a person who derives title to the design from any of the above mentioned persons, or by devolution by will or by operation of law, or a person who would, upon registration, be entitled to have the design assigned to them; and

·         the legal personal representative of a deceased person in any of the above classes of people as noted in s 13(1) of the Act. 

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