Question
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02 October 2015

Practice safe design. Use a concept and register it.

Business / Franchise Sale & Purchase, Trade Marks
Federal

Asked

This is actually a question about design law. What are the defences in design infringement? Does the owner of a design registration in Australia have no rights against the seller of a product overseas that predates the design registration in Australia?

Answered

In Australia the law regarding registered designs is prescribed by the Designs Act 2003.

It sets out a two-step threshold test for validity of designs. A design must be both 'new' and 'distinctive' to be registered. Only the person who created the design is eligible to register it: see section 13. The rights derived from registration are set out in section 10.

This test provides that minor or insignificant changes to a design are irrelevant if the overall impression remains one of substantial or significant similarity. The focus is on the similarities between the two designs rather than the differences.

An infringement test is also set out and is intended to be clear and simple and for the design rights to be readily enforceable.
The infringement test is consistent with the definition of 'distinctive'. If another design is used that is substantially similar in overall impression to a registered design, that use will be an infringement.

See the Designs Act 2003.

Specifically:

Chapter 6, Part 2: 

  • section 71 (infringement, including when importing a product into Australia for sale that infringes a registered design);
  • sections 74 & 93 (counter-claims by defendant including seeking to have registration revoked);
  • section 75 (remedies for infringement, including sub (2) that states a court may refuse to award damages for infringement where the defendant was not aware the design was registered after taking reasonable steps to ascertain whether or not it was registered).

Chapter 6, Part 3 (relief from unjustified infringement threats).

With respect to protecting Australian registered designs overseas:

  1. The design needs to be registered in other countries, and to back-date registration to the Australian priority date they need to apply in other countries within six months of filing the application in Australia.
  2. A new application can be made in each foreign country as if making an application for the first time. This is called a National Application. Or -
  3. A new application in each foreign country can be made within six months of the Australian application specifying that the applicant is claiming the date on which they lodged their Australian application as the priority date (eg seeking to back-date it). This is called a Convention Application.
  4. A convention application has several advantages:
    ​- You have up to six months to lodge an application in a foreign country;
    - The date of filing of your Australian application is the priority date;
    - Any public disclosure of your Australian application during those six months will not affect the newness of your foreign application;
    - If you lodge your foreign application more than six months after your Australian application, you cannot have the date of filing of your Australian application as the priority date. In this event, any disclosure of your design before you file your foreign application could affect the newness of that application.
     
  5. You make a convention application in a foreign country in the same way as a national application in that country. In addition, you may need to supply a certified copy of your original Australian application, known as the Basic Document.

Regards Mentor