Design Attorneys | Sydney | Australia

What is a design?

A design conceptually is separate from the article | product to which it applied.

For example office tables from different designers may function the same as an office table, ie they are the same type of product, but differ visually when they bear different designs ie they look different.

The overall visual appearance provided by a design can be a combination of visual features including: shape, colour, configuration, pattern, ornamentation.

A design right protects the overall visual appearance of new and distinctive products. It does not protect the product itself but a product bearing the protected design.

Collapse info window! Collapse all info windows!

What rights does a registered design provide in Australia?

Australia has a 2 step process for securing design right protection, the separate steps are registration and certification.

In Australia a registered design provides rights of ownership of the design to the registered owner, and provides a pathway to have the registered design "certified" which will then establish rights enforceable against infringers.

For the duration of a certified registered design, its owner has the right to decide who may use and commercially exploit the registered design, and how it is used / commercially exploited.

In other words a certified registered design means that the design cannot be commercially made, used, distributed, imported, or sold by others in Australia without the registered design owner's consent.

What rights does a registered design provide in New Zealand?

In New Zealand a registered design provides rights of ownership and establishes rights enforceable against infringers.

In New Zealand the rights provided by a registered design are generally similar to the rights provided by a certified registered design in Australia.

For the duration of a registered design, its owner has the right to decide who may use and commercially exploit the registered design, and how it is used / commercially exploited.

In other words a registered design means that the design cannot be commercially made, used, distributed, imported, or sold by others in New Zealand without the registered design owner's consent.

Collapse info window! Collapse all info windows!

What kinds of designs can be protected in Australia?

In Australia a registered design can only be 'certified' if it is 'new' and 'distinctive' when compared to other designs that form part of the 'prior art base'.

'New' means the design is not identical to an earlier published design.

'Distinctive' means the design is visually unique (or not substantially similar in overall impression compared to other published designs.

'Prior art base' means designs or information about a design that has been shared publicly by a publication anywhere in the world or by use in public in Australia.

A design generally must not be published before the filing date.

What kinds of designs can be protected in New Zealand?

In New Zealand a design can only be registered if it is has 'new' or 'original' features of shape, configuration, pattern or ornament applied to an article by any industrial process or means when compared to other designs that form part of the 'prior art base'.

The common design of a 'set of articles' can be registered in a single registration if the articles are commonly used or on sale together. This requires that there be some common shape features present in each element of the set.

The 'originality' registrability requirement in New Zealand has a lower threshold than the 'Distinctive' requirement in Australia therefore some designs not registrable in Australia may be registrable in New Zealand.

'Prior art base' means designs or information about a design that has been shared publicly by a publication anywhere in New Zealand or by use in public in New Zealand.

Publications on the internet are taken to be publications in New Zealand.

The 'prior art base' in New Zealand is localised to New Zealand unlike Australia which includes publications worldwide therefore, some designs not registrable in Australia may be registrable in New Zealand.

A design generally must not be published before the filing date.

Collapse info window! Collapse all info windows!

How long does design registration protection last?

In Australia a registered design can last up to 10 years made up of 2 x 5 year terms.

In New Zealand a registered design can last up to 15 years made up of 3 x 5 year terms.

Collapse info window! Collapse all info windows!

Is a design registration valid in every country?

Design registration rights are national territorial rights.

In general, the exclusive rights are only applicable in the country or region in which a design has been registered in accordance with the law of that country or region.

If design protection is required in a given country then a design application in that country will be required however an international design registration system also exists (the Hague System for the International Registration of Industrial Designs ) called the Hague System.

The Hague System allows you to secure design protection simultaneously in up to 77 member states or regions through one international application, in one language with one set of fees.

Australia and New Zealand are not part of the Hague System. However if an Australian or New Zealand owner of a design may be entitled to seek design registration under the Hague System if the owner has a real and effective industrial or commercial establishment in a contracting party to the Hague system, or is a national or domiciled or has a habitual residence in a contracting party tot eh Hague System.

Collapse info window! Collapse all info windows!

How are design rights enforced?

Design rights (like other legal rights) are enforced in court by the owner of the design.

In the case of Australia a registration of a design must be certified before it is enforceable against infringers and while certification can be requested after the design is registered it can also be requested at the same time the initial design application is filed.

In the case of New Zealand registration of a design immediately provides enforceable rights against infringers.

The obligation for monitoring, identifying, and taking action against infringers of a registered design lies with the owner of the design.

Collapse info window! Collapse all info windows!

What is a designs license, and why license a designs?

A designs license is a contract where the owner of a registered design grants permission to another individual/organisation to make, use, sell etc., ie commercially exploit the registered design.

The commercial exploitation under the license takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time as stipulated in the license.

An owner of a registered design may grant a license to a third party for many reasons.

For example the owner of a registered design may not have the means or desire to make and commercially exploit the design and chooses to allow others to make and sell the design in return for “royalty” payments under a license agreement.

Alternatively, an owner of a registered design may not have the means to cover market demand and may choose license the registered design to one or more persons/organisations in one or more countries building mutually beneficial business relationships while establishing income streams under one or more licenses.

Unlike selling or transferring a registered design to another party, a license does not transfer ownership of the registered design but merely provides legal rights to use the registered design according to the terms of the license.

Collapse info window! Collapse all info windows!

Why are registered designs useful to the community and economy?

Registered designs provide a legal and commercial monopoly of a registered design to the owner of the design thus providing an incentive to ongoing private development of new designs which benefit society as a whole.

A registered design requires a public disclosure of the design and once knowledge is publicly available, by its nature, it can be used by others to make further developments of new designs which also benefit society as a whole.

These incentives and the dissemination of knowledge about new designs encourage further creative development, which can facilitate increased economic activity and continuously enhanced standards of living.

Collapse info window! Collapse all info windows!

What conditions must be met to obtain design protection in Australia?

Protection of a design in Australia is a two step process: Registration and Certification.

Both steps are necessary to legally enforce a design right however the certification step is optional until you require enforceable rights.

Registration

A design can only be registered if all the design application formalities are in order.

The designs office will complete a formalities examination shortly after a design application is filed and if all is in order it will register the design otherwise it will issue a formalities report that muster be timely overcome before the design will be registered.

Certification

A registered design can only be certified if it is 'new' and 'distinctive' when compared to other designs that form part of the relevant 'prior art base'.

While certification of a registered design can be requested after the design is registered it can also be requested at the same time the initial design application is filed.

'New' means the design is not identical to an earlier design published worldwide.

'Distinctive' means the design is visually unique compared to other designs published worldwide.

'Prior art base' means designs or information about a design that have been shared publicly anywhere in the world or by use in public in Australia.

'Relevant prior art base' means the prior art base as it existed before the priority date of the application for registration.

What conditions must be met to obtain design protection in New Zealand?

Protection of a design in New Zealand is achieved by registration of the design.

A design can only be registered if all the design application formalities are in order and the design is 'new' or 'original' when compared to other designs that form part of the 'prior art base'.

'New' means the design is not identical to an earlier design.

'Distinctive' means the design is visually unique compared to other designs published worldwide.

'Prior art base' means designs or information about a design that has been shared publicly by a publication anywhere in New Zealand or by use in public in New Zealand.

'Relevant prior art base' means the prior art base as it existed before the priority date of the application for registration.

Collapse info window! Collapse all info windows!

How much does it cost to protect a design?

The costs in pursuing design protection can vary and is subject to the search and filing strategy that is adopted (including the optional examination | certification step in the case of Australia), which can have an impact on costs or when costs are incurred in the protection process.

Therefore "how much does it cost to register a design?" should be with context of a search and filing strategy that meets your requirements.

Some costs

Costs for budget planning purposes can be provided once a search and filing strategy that meets your requirements has been formulated in consultation with you however in the mean time the order of magnitude of some costs are provided in the following table for reference.

Collapse info window! Collapse all info windows!

We require the following details in order to file a national design application.

Applicant's Details

1 | the full legal name and address of each person, company or other legal entity in whose name the application is to be made;

2 | the Australian company number (ACN), or the Australian registered body number (ARBN) if relevant for any company that is an applicant;

3 | in the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Design Details

1 | the title of the article to which the design is applied;

2 | the features of the design which are considered to be new and distinctive;

3 | a set of representations in digital format as drawings or photographs that illustrate all the features of the design;

4 | the representations must show the product that is named in the application and not just the design,for example, a two dimensional design applicable to a T-shirt must show the T-shirt and the design as applied to it;

5 | the representations should not include any text matter that is not part of the design detail, however each representation requires a title;

6 | multiple designs in one drawing or photograph must be arranged so that detail of each design is visually evident and not obscured by another;

7 | in the case of a single design applied to more than one product the representations must show the design applied to each product that forms part of the application;

8 | representations should show only the design or designs that are being applied for and minimise or avoid extraneous matter that may confuse the scope of the relevant design details.

9 | drawings and photographs to be be provided in accordance with the following additional guidelines as applicable.

Guidelines For Drawings

1 | drawings to be provided in .pdf or .dwg format;

2 | drawings to be of drafting quality or no less than high quality artistic sketches of clear and definite detail, linework should be well defined lines and strokes and not inconsistent, faint or otherwise sketchy lines;

3 | drawings should be illustrative and should show the whole assembled product;

4 | all views should be consistent in detail;

5 | shading for example to indicate curved surfaces is allowable if it helps illustrate important detail of the design;

6 | exploded views are allowable if they illustrate detail that could otherwise not be clearly illustrated or if components of the product being illustrated can be separated in normal use e.g. a bottle with cap;

7 | each representation should be shown in proper proportion to each other representation;

8 | close-ups of portions of the design are allowable but must be consistent in detail with all other views;

9 | section views showing the profile of the product are allowable eg. internal features of a bottle cap where normal views would not adequately show this, and should be indicated by oblique hatching.

10| environmental views of the design shown in use is allowable but must clearly be labelled accordingly to exclude details not forming part of the design;

11| drawings must be free of dimensions and all material not being part of the design including borders and title blocks.

Guidelines For Photographs

1 | photographs provided in high resolution.jpg format;

2 | environmental lighting at the time of taking photographs should not obscure or confuse important detail of the design;

3 | photos should be taken against a plain and contrasting background;

Statement of Newness and Distinctiveness(SoND)

A SoND is optional however:

1 | can be used to highlight the new and distinctive visual features of a design;

2 | can inadvertently narrow the scope of the design if unduly narrowly drafted

3 | can work together with representations to highlight the new and distinctive features of a design for example:

- solid lines in a representation can be used to highlight new and distinctive elements of the design

- dotted/dashed lines show the visual features of the entire product the design is applied

- the accompanying SoND is provided as “The shape and configuration of the product as shown by solid lines in the accompanying representations is new and distinctive.”.

Power of Attorney

An executed power of attorney is not required.

Need Help?

Collapse info window! Collapse all info windows!

For design applications filed before 10 March 2022 the following requirements apply.

1 | if an express request to register or publish the design was not included in the design application at the time of filing then a separate request for registration or publication must be filed within 6 months of the priority date of the application otherwise the application will lapse.

Need Help?

Collapse info window! Collapse all info windows!

We require the following details in order to file a convention design application.

1 | the same filing requirements as a National Application as provided above

2 | plus the convention priority details: filing date, application number, and country where the foreign application was filed.

Filing Time Limits

The convention time limit to file an application and validly claim priority from an eligible first application is +6 months from the filing date of the first application.

Collapse info window! Collapse all info windows!

We require the following details in order to file a national design application.

Applicant's Details

1 | the full legal name and address of each person, company or other legal entity in whose name the application is to be made;

2 | the New Zealand company number (NZCN) if relevant for any company that is an applicant;

3 | in the case of an applicant that is a non New Zealand legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Design Details

1 | the title of the product/article to which the design is applied;

2 | a statement of novelty which is a brief statement regarding what is novel about the design and must include the title/name of the article, it must identify any of the features of shape, configuration, pattern or ornamentation that are novel, refer to the representations however a statement of novelty isn't required for textiles, wallpaper and lace;

3 | a set of representations as drawings or photographs that illustrate all the features of the design;

4 | the representations must show the article that is named in the application and not just the design, for example, a two dimensional design applicable to a T-shirt must show the T-shirt and the design as applied to it;

5 | the representations should not include any text matter that is not part of the design detail, however each representation requires a title eg "perspective view";

6 | representations should show only the design that is being applied for and minimise or avoid extraneous matter that may confuse the scope of the relevant design details;

6 | representations should show only the design that is being applied for and minimise or avoid extraneous matter that may confuse the scope of the relevant design details;

7 | drawings and photographs to be be provided in accordance with the following additional guidelines as applicable.

Guidelines For Drawings

1 | drawings to be provided in .jpg format;

2 | each page of images must be submitted as a single .jpg file;

3 | one or several images may be on each page;

4 | if the design is to be applied to a set of articles, then the representations should illustrate the design applied to every article of the set and be submitted against that article;

5 | drawings to be of drafting quality or no less than high quality artistic sketches of clear and definite detail, linework should be well defined lines and strokes and not inconsistent, faint or otherwise sketchy lines;

6 | drawings should be illustrative and should show the whole assembled product;

7 | all views should be consistent in detail;

8 | shading for example to indicate curved surfaces is allowable if it helps illustrate important detail of the design;

9 | exploded views are allowable if they illustrate detail that could otherwise not be clearly illustrated or if components of the product being illustrated can be separated in normal use e.g. a bottle with cap;

10 | each representation should be shown in proper proportion to each other representation;

11 | close-ups of portions of the design are allowable but must be consistent in detail with all other views;

12 | section views showing the profile of the product are allowable eg. internal features of a bottle cap where normal views would not adequately show this, and should be indicated by oblique hatching.

13 | environmental views of the design shown in use is allowable but must clearly be labelled accordingly to exclude details not forming part of the design;

14 | drawings must be free of dimensions and all material not being part of the design including borders and title blocks.

Guidelines For Photographs

1 | photographs provided in high resolution.jpg format;

2 | environmental lighting at the time of taking photographs should not obscure or confuse important detail of the design;

3 | photos should be taken against a plain and contrasting background;

Authorisation of Agent

An authorisation of agent form is not required in order to complete a filing.

An authorisation of agent form is required, if an agent is appointed after filing the application or in cases when there is a change in agent after filing the application.

Need Help?

Collapse info window! Collapse all info windows!

We require the following details in order to file a convention trade mark application.

1 | The same filing requirements as a National Application as provided above

2 | plus the convention priority details: filing date, application number, and country where the foreign application was filed.

Filing Time Limits

The convention time limit to file an application and validly claim priority from an eligible first application is +6 months from the filing date of the first application.

Collapse info window! Collapse all info windows!