Designs Act 2003 — design registration
IP Australia administers registered designs — visual appearance of products.
Who must comply
Designers and design owners (including employers and successors in title) who want enforceable rights in the overall visual appearance of a new and distinctive physical product made on a commercial scale (for example a couch, a car or a dress), and businesses that need to clear new products against existing registered designs.
What triggers it
Deciding to protect a new product design, ideally before any public disclosure; a third party requesting examination of your registered design; or the 5-year renewal date approaching.
When due
File before disclosure, or within 12 months of the first public disclosure if relying on the grace period (claimed at filing or any time before examination). Renew before the 5-year anniversary of filing; late renewal attracts a fee for each month late, for up to six months.
Evidence required
Filed application with design representations and product name; Locarno classification; Statement of Newness and Distinctiveness; certificate of registration and, for enforcement, certificate of examination; grace-period declaration with dated evidence of first publication; renewal receipts.
Max penalty
There is no penalty for not registering, but an unregistered or uncertified design cannot be enforced against copiers. A registration ceases if the owner does not pay its share of the examination fee when a third party requests examination, and lapses after 5 years if not renewed (and permanently after 10 years). IP Australia charges a fee per design at filing, a further fee to request examination and a renewal fee, with higher fees for postal lodgement.
Who must comply with this? The applicability test by industry, business structure and size.
Summary
Under the Designs Act 2003, protecting the visual appearance of a product is a two-part process run by IP Australia: registration, then certification through examination. Registration takes at least 3 months (assessment usually about 8 weeks) and publishes the owner, designer and images on Australian Design Search; a registered design can only be enforced against infringers once it has been examined and certified, which takes about 13 more weeks. Several designs may share one application only if every product sits in the same Locarno class. A design right lasts 5 years from the filing date and can be renewed once, for a maximum of 10 years. Since 10 March 2022 a 12-month grace period lets an owner file after its own (or a leaked) public disclosure, although a third party who began using a similar design first may be protected by the prior-use exemption.
Enforced by
Source legislation
Topics
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Reading
Frequently asked questions
- Who must comply with Designs Act 2003 — design registration?
- Designers and design owners (including employers and successors in title) who want enforceable rights in the overall visual appearance of a new and distinctive physical product made on a commercial scale (for example a couch, a car or a dress), and businesses that need to clear new products against existing registered designs.
- What triggers Designs Act 2003 — design registration?
- Deciding to protect a new product design, ideally before any public disclosure; a third party requesting examination of your registered design; or the 5-year renewal date approaching.
- When is Designs Act 2003 — design registration due?
- File before disclosure, or within 12 months of the first public disclosure if relying on the grace period (claimed at filing or any time before examination). Renew before the 5-year anniversary of filing; late renewal attracts a fee for each month late, for up to six months.
- What is the maximum penalty for Designs Act 2003 — design registration?
- There is no penalty for not registering, but an unregistered or uncertified design cannot be enforced against copiers. A registration ceases if the owner does not pay its share of the examination fee when a third party requests examination, and lapses after 5 years if not renewed (and permanently after 10 years). IP Australia charges a fee per design at filing, a further fee to request examination and a renewal fee, with higher fees for postal lodgement.
- What evidence is required for Designs Act 2003 — design registration?
- Filed application with design representations and product name; Locarno classification; Statement of Newness and Distinctiveness; certificate of registration and, for enforcement, certificate of examination; grace-period declaration with dated evidence of first publication; renewal receipts.
Source: https://www.ipaustralia.gov.au/design-rights/timeframes-and-fees. Rules Mate is not a law firm. Always verify against the live regulator source before acting.