Own your look, protect the visual appearance of your product for up to 10 years.
Preparing the drawings
To file an application for a Registered Design, representations of the product are needed. These may be photos of the product, however, it is preferable to have black line drawings of the product.
The drawings or photos should show different views so that all the aesthetic features of the product are visible.
The drawing or photos should show the final form of the product you intend to make, sell or use. It is not generally possible to modify the appearance of the representations after the design application is filed at the Designs Office.
Getting the design ‘registered’
Shortly after the Application is filed, the Designs Office will conduct a ‘formalities examination’ to check that all documentation and other information is in order. The Design will then be ‘Registered’.
The Design is Registered for a maximum period of 10 years, subject to the payment of a ‘renewal fee’ at the 5th year.
Although “Registered’, the Registered Design is not ‘enforceable’ against an infringer, until it is ‘Certified’.
Certification of the registered design
If a Registered Design is to be enforced against an infringer, it must firstly be ‘Certified’ by going through a substantive examination process.
Examination may be requested at any time. When examination is requested, the Examiner will conduct a search of to make a comparison of the product with any similar types of products which existed or which were published before the priority/filing date of the design application, to ensure that the design is new and distinctive.
Once it passes through the examination process, a ‘Certificate’ of examination is issued, and then the Certified Design may then be enforced against an infringer.
An Australian Trade Mark Registration only protects you in Australia.
If you wish to protect your Trade Mark overseas, you will need to file separate overseas Trade Mark Applications in the countries of interest or you may be able to file an International Application designating countries that have signed up to an International Agreement.
Australia has an international agreement allowing Australian Trade Mark applicants to file Trade Mark applications within the first 6 months of the initial Australian Trade Mark application, while retaining the original priority date of the Australian case.
Each overseas application will go through a separate examination process according to the Trade Mark laws of the relevant country, before being registered.
Trade Marks can be renewed indefinitely, provided the mark is in use, and subject to the payment of periodic renewal fees, typically every 10 years.
Who can apply for a design?
A Design can only be registered to the designer(s) who created the Design, or to a person/company who has ‘entitlement’ to the Design from the designer(s).
Is my employer entitled to my design?
If the Designer is an Employee, and it is within the scope of the Employees duties to ‘create’ designs, then, under common law, the Employer may automatically have ‘entitlement’ to the rights of the Design.
Can I still get a registered design if I have already made, used or sold my product?
Unfortunately this is generally not possible…you should file the application for the Registered Design before there has been any public disclosure of the Design.
How long does it take to get a design registered?
The registration process can be quite quick, typically only a few weeks. This is because it is merely checked for compliance with certain ‘formalities’ before it is ‘registered’.
However, a Registered Design cannot be enforced against an infringer until it is examined and ‘Certified’.
Certification can also be quick, typically weeks or a few months, but this depends on Designs Office backlogs.
Can I extend my registered design for more than 10 years?
Unfortunately, Australian Designs cannot be extended for more than 10 years.
When do I need to file overseas design applications?
An Australian Design covers Australia only. If you wish to protect your invention in other countries, you need to file applications in the countries of interest.
Australia has international agreements allowing Australian Design applicants to file Design applications in most foreign countries within 6 months of the first Australian Design Application while retaining the original priority date.