Design registration in Australia
A design registration protects the way your product looks: its shape, configuration, pattern and ornamentation. Official fees start at $200, it registers in months rather than years, and for a lot of consumer products it is the right that actually stops a competitor, because copying the look is what a competitor does first.
Timing is the part that matters. Newness and distinctiveness are assessed against everything publicly available anywhere in the world before your priority date, and that includes anything you have shown the world yourself. There is a twelve month grace period. I treat it as a safety net rather than a plan, for reasons set out below.
Feel free to get in touch if you have designed something and you are heading towards launch. Preparing and filing design applications is one of my core design services, the first conversation costs you nothing, and I quote a fixed fee before any work starts.
"Warren is communicative, efficient and knowledgable. You know you are on good hands when you work with him. He gave great advice across trade mark, design registration and patent. Highly recommend working with him."
- Stella Xu
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
File before you show it to anyone
The prior art base takes in anything published or publicly used anywhere in the world before your priority date. Your own disclosure counts against you the same as a competitor's.
So the things that put a design at risk are the ordinary things a business does on the way to a launch:
A stand at a trade show
A crowdfunding page
A photo of the prototype on Instagram
A product page that goes live before the shipment lands
A pitch deck circulated without a confidentiality agreement
A supplier sample sent without one either
None of that is careless. It is simply what launching looks like. The fix is to get the application in first, and because a design application is cheap and quick, the order is usually easy to arrange once you know it matters.
If you have already published, read the next section before you decide it is too late.
The grace period, and why I treat it as a safety net
Since 10 March 2022 Australia has had a twelve month grace period. A disclosure made by you, or by someone who got the design from you, can be disregarded when newness and distinctiveness are assessed, provided the application is filed within twelve months of it. It applies to disclosures made on or after 10 March 2022.
That has rescued plenty of applications. Two things stop me treating it as a filing strategy.
It is an Australian rule. Grace periods are a matter for each country. They vary in length, in what they cover, and in whether the country has one at all. A disclosure the Australian grace period forgives can still cost you a market you have not thought about yet, which is why publishing before filing is worth deciding deliberately rather than by accident. The Australian grace period also does not extend to designs published by a foreign IP office, so it will not rescue a missed Paris Convention deadline.
Section 71A. The grace period came in with a companion provision. Somebody who began using your design before your priority date, or took definite steps towards using it, has a defence to infringement. That covers a person who copied it from your own public disclosure. So you can rely on the grace period, secure your registration, and still find that the competitor who saw your trade show stand and went into production is entitled to keep going.
The grace period exists for the disclosure you did not mean to make. It is not a reason to launch first and file afterwards.
What defines what you own
The representations. These are the drawings or photographs of the product. They are the main source of information about the visual features of the design, and they have to show those features clearly and consistently across every view. What is in them is what you own. What is left out, or shown ambiguously, is generally not recoverable afterwards, because section 28 does not allow an amendment to add matter that was not in substance disclosed when you filed.
This is where most of the value of getting help sits. Which views to include, whether to show the product in context, line drawings or photographs, whether to disclaim parts of the article: every one of those decisions moves the scope of what you end up holding. They are easy to get wrong and difficult to undo.
The statement of newness and distinctiveness. Optional, and worth thinking about properly. Where you identify particular visual features as new and distinctive, section 19(2)(b) requires particular regard to be given to those features when distinctiveness is assessed. A well drawn statement points the examiner, and later a court, at the features you actually care about.
A word on boilerplate. A statement claiming every feature of the design separately or in any combination has been through this before, in Reckitt Benckiser Inc [2008] ADO 1, where it was read down to mean the combination of all the visual features shown in the representations. A statement that claims everything tends to emphasise nothing.
What happens after you file
You have six months from the priority date to request registration. For applications filed on or after 10 March 2022, if you do not request it, the request is deemed to have been made at the end of those six months under section 35(4) and (5). The application registers whether or not you act, unless you withdraw it first.
A formalities check, not an examination. IP Australia checks that the application meets the formal requirements. It does not search the prior art and it does not decide whether your design is new or distinctive. That comes later, at certification, and only if you or somebody else asks for it.
IP Australia aims to issue 85% of first reports on registration requests within 8 weeks, and 95% within 9 weeks. Registration itself usually takes at least three months.
Publication happens on registration. The design stays confidential until then. If you want longer before it becomes public, deferring the registration request is the lever you have, up to the six month limit.
A certificate of registration issues and an official notice is published.
More than one design in one application
Several designs can go into a single application, and the fee structure makes it worth considering. The first design costs $200 and each additional design costs $150.
This suits a product family, a set of variants on the same idea, or a product together with the parts that go with it. Each design in the application is dealt with separately, so a weak one does not drag the others down with it, and each ends up as its own registration with its own number.
Worth doing the thinking at filing rather than later, because a design you leave out is a design you have to file fresh, with a later priority date and whatever has been published in the meantime sitting against it.
Filing overseas
Design rights are territorial, so an Australian registration covers Australia and nothing else.
You have six months from your Australian filing date to claim its priority overseas. That is half the twelve months that applies to patents, which means the overseas decision arrives sooner than most people expect. Australia is not a member of the Hague System either, so there is no single international design application of the kind the PCT provides for patents, and each country needs its own filing.
I work with overseas associates for design filings outside Australia, so you deal with me and I instruct and manage them.
Frequently asked questions
Can I register a design after I have already launched the product?
Often yes. A twelve month grace period covers disclosures made by you, or by someone who got the design from you, on or after 10 March 2022. Two cautions: other countries set their own rules and some have no grace period at all, so an overseas position may already be affected, and section 71A gives a defence to anyone who started using the design before your priority date, including someone who copied it from your own disclosure.
Does a registered design stop someone copying my product?
Only once it has been certified. Registration puts the right on the register. Certification is the examination that makes it enforceable, and section 73 blocks infringement proceedings until the certificate issues.
How long does a registered design last?
Five years from the filing date, renewable once for a further five, so ten years at most. There is a six month window for late renewal with a penalty of $100 per month or part of a month.
Can I register more than one design in the same application?
Yes. Several designs can go into one application, each is dealt with separately, and each ends up as its own registration. The first design costs $200 and each one after that costs $150.
Do I need drawings, or will photographs do?
Either can work. The Act allows a drawing, tracing or specimen of a product embodying the design, or a photograph of one. The choice affects scope, so it is worth a conversation rather than a default.
What is a statement of newness and distinctiveness?
An optional statement identifying the visual features you say are new and distinctive. Where one is filed, section 19(2)(b) requires particular regard to be given to those features when distinctiveness is assessed, so a focused statement is worth more than a broad one.
Heading towards a launch?
Send me photos or drawings of what you have made and tell me when you plan to show it publicly. I can come back to you on whether it is registrable, what is worth including and what it will cost, before you commit to anything.