Understanding Australia's Unique Designs Law: Key Features and Differences
“Common Design” example from the Designs Examiners’ Manual of Practice and Procedure
Despite harmonisation in intellectual property in general, Australia’s design law and practice differs a bit compared to other jurisdictions such as the United States, Europe, and Japan. For design owners and the legal professionals advising them, understanding these differences is important to effectively navigate the registration process and protecting the intellectual property.
Basic Requirements and Application Types
In Australia, a design application must meet minimum filing requirements, be submitted by an entitled person, and may cover more than one design or product. The flexibility in the application process allows for:
Single Design for One Product: An application can cover a single design applied to a specific product, with detailed representations showing the design's visual features.
Common Design for Multiple Products: A single design that applies to more than one product can be filed as a 'common design' application. This means the design shares visual features across different products, like a pattern or image applied to a dress, shoes, and a handbag. The design's overall appearance, for example shape, pattern, or ornamentation, must be clearly shown to be common across the products. The advantage is that only one filing fee is required for the various products, because the application is for the common design.
Multiple Designs for One Product: More than one design can be registered for a single product, such as different colours or shapes of a coffee mug. Each design requires a separate fee and must be distinctly indicated in the application. Because each design application is associated with the same Locarno class, IP Australia does provide a small discount in the filing fee for applications filed at the same time.
Multiple Designs for Multiple Products: This option is available if all products fall within the same Locarno Agreement class. For instance, a plate, bowl, and mug in a homewares range can be included in one application if they are in the same class. However, products from different classes, such as a hat and a handbag, cannot be filed together. Again, where all design applications are associated with the same Locarno class, IP Australia provides a small discount in the filing fee for applications filed at the same time.
For options 3 and 4 above, each design within an application is treated separately, with its own design number and subsequent registration, even if filed together. This contrasts with jurisdictions like Europe, where a single application fee can cover multiple designs, or the United States, where multiple embodiments of a design can be included in one application.
Some Key Differences in Australia
1 Functional Designs
In Australian designs law, a design can be registered even if it includes functional features like specific shapes or configurations. Unlike in the United States, where designs must be ornamental, Australian law allows protection for designs that serve a functional purpose. However, comparable to European law, it should not be the case that the functionality as dictated by the features of the design cannot be achieved through another design. Nevertheless, a design protects the overall appearance of the product, not the functional aspects, which are typically covered by patents.
2 Disclaiming Features
In terms of disclaiming features, broken lines can be used for this purpose, but should be used in combination with a Statement of Newness and Distinctiveness* that explains that features in broken lines should be disregarded.
*The Statement of Newness and Distinctiveness deserves an entire discussion of its own!
3 Environmental Views
In Australian design applications, environmental and reference views are used to illustrate the design in its intended environment or context. These views help clarify the design's appearance and use but do not form part of the official design being applied for. They are supplementary and must not create confusion about the design's scope. Only one environmental or reference view should be included per application, clearly labeled to prevent ambiguity.
To be acceptable, these views must clearly distinguish the design's visual features from the contextual elements. The application must also include at least one standard representation of the design, isolated from any environmental or reference context, to ensure clarity about what is being registered.
“Environmental View” example from the Designs Examiners’ Manual of Practice and Procedure
4 Examination & Opposition
In Australia, design registration typically occurs within weeks of filing, without substantive examination. Of course, to enforce the rights, a design must be examined and certified, and examination can be requested at any time (or not at all).
There is no formal opposition procedure. However, a third party can request an examination of the registered design, potentially leading to revocation if the design lacks newness or distinctiveness.
5 Term of Protection
The term of protection for a registered design in Australia is five years, with the option to extend for another five years, totalling a maximum of ten years. This duration is shorter than the 25-year maximum in Europe and the 15 years from the date of grant in the United States.
Conclusion
Australia's designs law provides unique provisions that can significantly impact the protection and registration of designs. Understanding these nuances, from application requirements to the importance of the Statement of Newness and Distinctiveness, is essential for successful protection.