Snapshot: How to register a design in Australia
What is the application process?
The Australian design application process begins with the filing of an application that includes:
- contact details of the applicant;
- contact details of the designer;
- a title or product name;
- a set of representations; and
- agreement details (if applicable).
Neither a power of attorney nor a certified copy of the basic application is required; however, these can be requested after deposit (although this is quite rare).
Within approximately two to six months of filing, the application goes through a relatively simple formalities check to ensure that sufficient information has been provided. If no issues are raised during the formalities check (or if all issues are resolved), the design proceeds to registration.
Design registration will have an initial term of five years from the Australian filing date, which may be extended for a further five years upon payment of a renewal fee.
Before a design registration can be executed, it must be reviewed and certified (i.e. considered new and distinctive). Examination is optional and may be requested at any time during the term of a design registration. The review usually takes place within three months of being requested and any issues raised during the review must usually be resolved within six months.
Review and appeal
How are the review and appeal procedures carried out?
During a formalities check, an application for registration of a model is classified according to the nature of the product. It is also taken into account that the application contains more than one design. The formal requirements of the application form are also reviewed to ensure compliance. If the verification of the formalities does not raise any problems (or if all the problems are solved), the application will proceed to registration.
Review of a design registration is voluntary and may be requested at any time by the registered owner or a third party. If a third party requests an examination, they must pay half of the examination fee and the registered owner must pay the other half. If the registered owner does not pay the other half, the registration of the design may cease.
A design registration must be examined and certified (i.e. the design passes the examination and is considered new and distinctive) before it can be applied. Allegations of infringement of an uncertified design record should be avoided; such claims would likely constitute unwarranted threats under the Designs Act 2003.
After examination, an intention to certify is issued by the delegate to the registered owner of the design, to any person listed as having an interest in the design and, if a third party request for examination has been filed, to the third party who filed the request. The third party will have the opportunity to be heard by filing a request within a specified period (usually one month) if he does not agree with the delegate’s decision.
What are the opposition rules?
The Designs Act 2003 contains provisions allowing an interested party to be heard in respect of certain decisions and to object to variations or requests for an extension of time.
There is no formal objection process defined in the relevant legislation, and the Registrar determines the practice and procedure to be followed. However, the typical process is that after a Notice of Objection is filed, the matter proceeds to a hearing, with both parties having an opportunity to make submissions. The hearing may be based on written submissions or a requested oral hearing, or both.
What are the registration deadlines?
Registration of an Australian design application may be sought upon filing or at a later date. If an application for registration is not filed within 6 months of the priority date and the application has not been withdrawn, the application is deemed to have been made and the application will be registered.
Following an application for registration, an Australian Design Application typically proceeds with registration within approximately two months.
However, a registered design can only be legally enforced if it is examined and certified (i.e. the registered design passes the examination and is considered new and distinctive).
Examination is optional and may be requested at any time during the term of a design registration. The review usually takes place within three months of being requested and any issues raised during the review must usually be resolved within six months.
Deletion from the register
In which cases does deletion from the register take place?
In addition to design ownership challenges based on admissibility issues, removal from the register usually takes place after review if the design is not considered new and distinctive.