Designs enforcement and disputes

Infringement of registered designs

Infringement of a design registration may occur by others who make, import, or sell a product of the same or similar appearance to that registered. The precise degree of similarity needed for infringement depends on the same considerations as when assessing similarity in the context of design novelty.

Only acts done in Australia are infringing

Although an Australian design registration only has effect against actions which occur within Australia—for example manufacture overseas, such as in China, would not in itself infringe an Australian design registration—importation of that product into Australia or selling of that product in Australia could also infringe the Australian design registration. If required, equivalent overseas design protection can be obtained.

Examination required before enforcing a design registration

Although your registration will, in most cases, be initially granted after a brief check for formalities compliance, it cannot be enforced at that stage. To enable enforcement the registration must then undergo substantive examination for assessment by IP Australia as to the novelty of the design.

IP Australia’s design examination process

To determine whether the design is novel or new, IP Australia undertakes searches through Australian and overseas design databases. Examination, which involves payment of an examination fee to IP Australia, can be requested at any stage throughout the 10 year term of the registration. Examination will usually take place a few months after the request.

The examination will either result in:

• a positive outcome meaning that IP Australia considers the design to be novel and in that case a Certificate of Examination is issued; or
• a negative report citing prior designs which IP Australia considers to negate the novelty of the design. A response can be filed to such a report challenging the assertions and findings of the report and if successful then a Certificate of Examination will be issued. If, however, the negative report is upheld, IP Australia will order the registration to be revoked. A decision to revoke the registration can be appealed to the Federal Court.

Infringement claims prior to examination

Prior to issue of the Certificate of Examination, all that can be done with the registration is to provide third parties with notice as to the existence of a registration.

It is not permissible to issue threats of design infringement until issue of the Certificate of Examination. Any threats made before the issue are considered to be unjustified threats and proceedings can be brought against those issuing such threats.

Process for infringement disputes

When enforcement of a certified design registration is required, action against infringement must be taken in the courts, usually the Federal Court although depending on the circumstances other courts may be appropriate. For further details, please refer to the part of our website dealing with litigation services.

Revoking Registered Designs

An action to seek revocation of someone else's design registration can be commenced by application to IP Australia or by application to the courts. The latter route is only applicable to registered designs which have a Certificate of Examination and, typically, revocation proceedings of this type would be by way of counter-claim to proceedings for infringement.

The revocation process

Revocation through IP Australia essentially involves use of the examination procedure or re-examination procedure. In each case, anyone can request examination of a design registration which has not yet been certified, or re-examination of a design registration which has already been certified. In these circumstances the party requesting examination/re-examination is able to provide IP Australia with details of prior designs it considers relevant to the novelty of the design in question. In practice, use of these examination/re-examination procedures by a third party would not normally occur without the third party having in its possession material of relevance to submit to IP Australia.

Designs searching: an important defensive tool

Davies Collison Cave is able to undertake designs searches to assess the likely novelty of a proposed new design and to assess whether a proposed new design is likely to constitute an infringement of a current design registration. We would be pleased to discuss your searching requirements with you.

Find out how we can help you

If you would like to learn more about designs, or any other area of intellectual property, Davies Collison Cave can customise a presentation to suit your needs. For further information or advice please contact your nearest Davies Collison Cave office.