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As can be seen in the flowchart below, registrations may be granted within a few months after filing, after a brief examination for formalities compliance. No substantive examination for the novelty or ‘newness’ of the design will have taken place at that stage.
Although at this stage the design will be registered, it can only be enforced against others (for instance if you wish to bring infringement proceedings against somebody who is using your design without authorisation) if you elect to have the design’s substantive merits examined first.
In order to file an application in Australia the following is required:
There are no particular requirements for the drawings or photographs other than that they are clear and capable of reproduction and they should be of a size that they can be fitted onto one or more A4 sheets. We note that there are no forms requiring signature by the applicant or designer.
Although it is possible to file an Australian application with multiple designs, this raises significant administrative problems and as such it is our practice normally to file a series of separate applications at the same time; the cost we apply is no different to that for filing an application with multiple designs.
An Australian design registration will only have effect against actions which occur in Australia, including manufacture, importation or sale. If equivalent protection is required overseas then protection will need to be obtained in each country of interest. Generally this will involve filing a separate application in each country although for Europe, a single application covering all countries in the European Community (or EU) can be filed.
For Australian applicants wanting protection overseas, filings would typically be made in New Zealand, USA, Europe and Japan.
Under a main international convention, (the Paris Convention), provided overseas applications are filed within six months from filing of the original Australian application, they are able to claim priority rights from the Australian application; it is as if they were filed on the same day as the Australian application. Overseas design applications of this type are often referred to as “convention applications”.
Although overseas design laws are generally similar to registered design law in Australia, there are some differences. For instance a new design of purely functional form, (for example a special nail), would be registrable in Australia> However, in some overseas countries it would not be registrable as some design laws permit registration only when an aesthetic design aspect is involved.
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.