Ensuring valid protection of your design in Australia

Some recent examples of prior publication of designs have highlighted the need for Australian designers to be vigilant to avoid any public disclosure of their design prior to filing a design application. Any such earlier disclosure (prior publication) may be cited as prior art against their eventual design registration, and can result in invalidity due to lack of newness or distinctiveness. Recently, we have observed an increase in the number of objections being raised against design registrations on this ground, leading to an unfortunate loss of rights for the design owner.

In a recent example of prior publication, a design owner attempted to raise funds for the development of a product (which is visually similar to their design registration) via a crowd-funding website. In another example, a review of a product in an online tech magazine included photographs of a product sample supplied to the reviewer.

In the event that circumstances such as the above arise, there are design/copyright overlap provisions available under Australian designs law to potentially exclude some types of prior publication from invalidating a registered design. However, the criteria that the registered owner must be able to satisfy in order for these provisions to apply are complex and apply only in very specific circumstances.

Relevant Australian designs legislation

Under Section 15 of the Designs Act 2003 (“the Act”), a design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design. The prior art base for a design (i.e. the designated design) consists of:

(a) designs publicly used in Australia; and

(b) designs published in a document within or outside Australia; and

(c) designs which are disclosed in a design application having an earlier priority date than the designated design, and which are made available for public inspection on or after the priority date of the designated design.

Further, under Section 16 of the Act, the designated design is new unless it is identical to a design that forms part of the prior art base for the designated design, and the designated design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the designated design.

Australian design registration and certification process

Australian design applications are not subjected to substantive examination prior to registration and typically proceed directly to registration. Post-registration examination is available. Importantly, a design registration cannot be enforced against a competitor unless, and until, it has been certified with the issue of a Certificate of Examination following successful post-registration examination. During such examination, an Examiner will conduct searches to determine if the design is new and distinctive.

No grace period provisions for Australian design registrations

Unlike some foreign jurisdictions such as the United States, Canada and Japan, there are no grace period provisions for filing a registered design in Australia following a prior publication of that design. Accordingly, any prior publication of a design (including by the design owner) before the filing of a corresponding design application is likely to be cited as prior art and may ultimately invalidate the eventual registered design.

Copyright overlap and the “saving” provision

It may be possible for a registered design owner in Australia to exclude a prior publication of their design from being cited as prior art on the basis of a somewhat complex “saving” provision under Section 18 of the Act, which provides that a design is not to be treated as other than new and distinctive if:

(a) copyright under the Copyright Act 1968 subsists in an artistic work; and

(b) an application is made by, or with the consent of, the owner of that copyright for registration of a corresponding design.

The general interpretation of Section 18 is that a prior publication (i.e. printed or electronic, not physical use) of a design may not be novelty destroying if all of the following criteria are met at the priority date of the design registration:

Copyright subsists in an artistic work (e.g. prototype, video, photographs, etc.) published by way of the prior publication; and
The registered owner owns, or has gained title, in the design from the author of, the copyright in the published artistic work; and
At the priority date of the design, products to which the design is “applied industrially” have not been sold, hired or exposed for sale or hire in Australia. In this context, “applied industrially” refers to the production of a notional 50 units, but can be lower depending on the product type; and
The design of the present registration corresponds to the artistic work published in the prior publication.

The above provision may therefore be applied to potentially exclude the publication of, for example, a photograph of a product prior to the filing of a corresponding design application, from rendering the eventual registered design invalid.

For this provision to apply to the online tech magazine example mentioned at the start of the article, the registered design owner must be able to sufficiently establish (as a question of evidence) that they are the owner of, or had gained title in, the design from the author of the artistic work in the prior public disclosure (i.e. the person who took the photographs of the product sample). Such evidence would include: information regarding who exactly created the artistic work, when exactly the artistic work was created, and how the registered design owner derived entitlement to the copyright in the artistic work created. The online review must also not have had exposed the product for sale or hire in Australia. Failure to meet any of the criteria set out above would result in the prior publication in question being maintained as prior art and the eventual invalidation of the registered design.