International Agreements |
Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Locarno Agreement Establishing an International Classification for Industrial Designs (as amended on 28 September 1979). |
Design Authority |
IP Australia |
Types of Designs Available |
- Single Designs.
- Plural Designs.
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Paris Convention Deadline: |
Six (6) months from the earliest claimed priority date. |
Registrability Requirements |
The Design must be new and distinctive. |
Non-Registrable Designs |
- Medals;
- Designs which contain the word “ANZAC”;
- Designs which are prohibited under the Crimes (Currency) Act 1981 (e.g. any Design that is capable of misleading a person into believing that the Design is current paper money or Australian prescribed security; this prohibition does not extend to coins);
- A Design(s) which is, or might reasonably be taken to be, scandalous;
- The Arms or a flag or seal of the Commonwealth or a State or Territory;
- The Arms or emblems of:
- A State or Territory;
- A city or town in the Commonwealth;
- A public authority of public institution in Australia;
- The armorial bearings, flags, State emblems or other signs of another country;
- A Design which is prohibited under the Olympic Insignia Protection Act 1987;
- A Design for an integrated circuit; and
- A Design which is subject to a prohibition order under s108 of the Designs Act 2003.
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Filing Requirements |
- Class(es) according to the Locarno Classification system;
- Applicant’s Name and Address, State and Country of Incorporation (if applicable);
- Designer’s Name, Address and Nationality;
- Statement of Entitlement of the Applicant; i.e. how the Applicant has derived the right to the Design from the Designer (Assignment, Employment or other Agreement);
- Name of the article(s) in relation to which the Design is sought to be registered;
- Representation(s) of the Design as applied to the article(s);
- An indication of the number of Designs in the Application;
- A request for Registration or Publication;
- Optionally: A Statement of Newness and Distinctiveness;
- Optionally: Any Convention Claim and the details (Date, Number and Country) of the Basic Application from which Convention Priority is claimed; and
- Government filing fee
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Initial Design Term |
Five (5) years. |
Full Term (if all renewals are paid timeously) |
Ten (10) years. |
Registration |
- If Registration is not requested when the Application is filed, a request must be filed within six (6) months of the filing date of the Application to request Registration or Publication of the Design or the Application will lapse.
- Within one (1) month of the filing date, the Application will be subject to a formalities check to ensure that the necessary information and representations are present and verify that the Application is in order for Registration.
- If the Application passes the formalities check, within a matter of weeks the Design will be registered and advertised in the Australian Official Journal of Designs, and made available for searching in the Australian Designs Data Searching (ADDS) database.
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Publication |
- Publication is an alternative to seeking Design Registration. Publishing a Design does not give an Applicant any rights in respect of the Design, but may be used for strategic purposes in circumstances where the Design cannot be registered (e.g. where the Design has been publically disclosed by being exhibited, sold, or displayed on a website) and the Applicant seeks to prevent others from obtaining Certification for the same Design.
- If publication is requested, the Application will be formally checked and the Design will be published in the Australian Official Journal of Designs and the ADDS database.
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Search and Examination |
- Examination is optional and is not automatic.
- Examination (Certification) is only carried out upon request and upon payment of Government fees.
- Any person may request Examination (the Applicant/Owner or a Third Party). Where a Third Party requests Examination, the Government fees must be paid by the Applicant/Owner or the Design ceases.
- Examination may be requested (by an Applicant/Owner or a Third Party) where a Design has already been examined and certified. That is, a Design may be examined multiple times.
- An Examination Report will issue approximately three (3) months after Examination has been requested. All objections identified in the Examination Report must be overcome within six (6) months of the first Examination Report date.
- Owners may request expedition of Examination. All Third Party Examination requests are automatically expedited.
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Amendment |
- An Application can be amended to exclude one or more of the Designs filed in it.
- Applicants can file separate Applications for Design(s) that have been excluded from an initial Application.
- Amendments to any document that results in the definition of the Design changing are only allowable if they do not include matter not in substance disclosed in the original Application, representations or other documents (e.g. to amend the Statement of Newness and Distinctiveness to better identify particular features of the Design and/or to delete a request for Registration or Publication).
- Amendments to documents filed by other persons are not allowable.
- Amending a document such as the Basic Application, or a Declaration or Affidavit filed by the Owner, has the effect of voiding the authenticity of the document.
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Third Party Oppositions and Applications |
- Entitlement Proceedings: A Third Party may assert that they are an entitled person in relation to the Design (whether or not some or all of the Owners of record are entitled persons). The outcome of the proceedings is revocation of the Design, with a Declaration identifying the person(s) whom the Registrar is satisfied is the proper Owner. When a Declaration is made, the people identified in the Declaration may file a new Application for a Design, the priority date of which is the same as it had in the Application in which it was first disclosed.
- Unjustified threats: If the Owner of a Registered Design threatens another person with infringement proceedings, or other similar proceedings, in respect of a Design that is not Certified, an aggrieved person may apply to the Court for a Declaration that the threats are unjustified; an injunction against the continuation of the threats; and the recovery of damages sustained by that person as a result of the threats.
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Restoration Provisions |
- Extension of time provisions are available where a Design Application lapses or a Design Registration ceases as a result of an error or omission by the Applicant/Owner, or their agent, or circumstances beyond the control of the person who is the Applicant/Owner. An extension of time may be requested for doing the relevant act, such as paying a renewal fee or responding to an Examination Report.
- The time for doing a relevant act may be extended before or after that time has expired.
- An Application for an extension of time of more than three (3) months will be advertised for Opposition purposes.
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Renewals |
- A Design Application may only be renewed once.
- The renewal fee must be paid within five (5) years from the filing date of the Application.
- The payment of the renewal fee results in the renewal of the Design for a further five (5) years.
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General |
- Design Registrations are not enforceable unless they are examined and certified.
- While the Regulations do not require the copy of the Basic Application to be certified by the relevant Office, the document must be sufficient to establish the facts to support any priority claim. Consequently, a certified copy from the relevant Office is the desirable form of copy of the Basic Application.
- A Basic Application that is not in English must be accompanied by a verified translation into English.
- Partial Design protection is not available. However, IP Australia will recognise a Partial Design Convention Priority Claim provided that a Statement of Newness and Distinctiveness which outlines the non-claimed part(s) of the representation(s), is filed.
- A copy of the Basic Application and a verified English translation (if relevant) is not required at filing but may be filed when Examination (Certification) is requested.
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