Designs - Australia
Designs - International Protection
What does a registered design protect?
A registered design protects the appearance of a product. In particular, a design protects
1. the shape or configuration of the product (eg. the shape of a tea cup)
2. the pattern or ornamentation of the product (eg. the pattern appearing on a tea cup)
3. both the shape and pattern of the product (eg. both the pattern on and shape of the tea cup).
Can a design, which is merely functional, be protected?
Yes, the shape of a product that has no aesthetic value and is merely functional can be protected by a registered design in Australia. However, the scope of that protection might be very limited. Equivalent protection is not always available in most other countries, which require a registrable design to have some aesthetic appeal.
How can I obtain a registered design?
By arranging for an application to be filed at the Designs Office, and requesting registration within the prescribed time.
When should I protect my new design?
Before any particulars of the design are made available publicly. Once another person, not bound by confidence, has become aware of the design in a proper manner, valid design protection is no longer available.
When can I make my design public and begin selling my product?
After the design application has been filed at the Designs Office.
Who is entitled to apply for a registered design?
The person who conceived the design (i.e. the designer) or the person who has acquired the rights to the design from the designer. If the designer conceived the design as an employee, the rights in the design may pass to the employer.
Am I entitled to apply for the registration of a design relating to a product l have seen overseas and which has not been available in Australia?
No, unless you have acquired the rights to the design from the designer. In addition, the design must meet prescribed newness requirements.
What are the newness requirements?
The design must not have been published in any document anywhere in the world, nor can it be known or publicly used in Australia, before the earliest priority date.
How long does it take for a design application to proceed to registration?
Usually between one to eight months, depending on the actions you take when filing the application.
How long does a design registration last?
For designs filed on or after 17 June 2004, ten years, provided the registration is renewed at the appropriate times ( application granted under the old Act may remain registered for up to sixteen years).
What steps do I first need to take if I think my registered design is infringed?
Before you threaten any proceedings or make any allegations, you must have your registered design certified. This process is started by requesting examination of your registered design.
What can happen if I threaten my competitor with infringement proceedings before my registered design is certified?
Your competitor may bring proceedings before the Federal Court for unjustified threats, and if proven, obtain an injunction and an award of damages against you.
If I have copyright protection do I need to register the design of my product?
Yes, copyright protection is not available for the shape of manufactured products. Where the design of the product is purely two dimensional (eg. a wallpaper pattern or the pattern on a T-shirt), copyright exists in the design and it is not necessary to register the design of the product unless you want monopoly rights in the design. Copyright only provides protection against the artistic work residing in the pattern being copied.
International Designs Protection
Is protection available by means of a world registered design?
No. It is necessary to seek protection by means of a registered design in each country in which protection is required.
When must foreign protection be sought?
In most countries, for a registered design to be valid the application must have been filed before the particulars were publicly disclosed and/or disclosed in a printed document or publication anywhere in the world. An exception to this is if you file an overseas application within six months of filing your Australian application, and claim priority from that application (see below).
Does my Australian design application provide any protection outside Australia?
Yes, for a limited period of time. If a design application is filed in a foreign country within six months of the date of an Australian design application, the foreign application can claim priority from the date of filing of the Australian design application. Therefore, if any other design applications are filed in that country after that priority date, or if there has been any disclosure of the design by another in that country after that priority date, subsequent applications or disclosures will not affect the validity of your foreign design application. It should be noted that this gaining of priority only applies to those countries that are signatories to the Paris Convention (almost all countries in the world).
If protection is required in a country that does not grant priority rights, applications should be filed, in most cases, before the design is made public anywhere in the world.
|
Back
Disclaimer