Design disputes

The two- or three-dimensional appearance of an article can be protected through design registration. Design registration grants the owner a 10 year monopoly on the visual appearance of a product, with the registration being renewed five years into the lifetime of the registered design. Failure to renew registration after five years will cause the registration to lapse, meaning that the design will be entered into the public domain and can be used by anyone.

In general, to be registered, a design should be:

  • new, meaning it has not been previously used in Australia, published in any document anywhere else in the world, nor submitted for application with an earlier priority date; and
  • distinctive, meaning that it should not look substantially similar in appearance.

Unlike in other jurisdictions, registered designs in Australia are enforceable only after being certified. Unregistered designs are only eligible for seeking relief through the common law tort of passing off and Australian Consumer Law on the basis of the good will established by the reputable use of the registered design.

Registration vs Certification

To register a design, IP Australia conducts a formalities examination, after which the design is registered. On the other hand, certification of examination is usually sought in order to enforce the registered design right against an infringement and entails a more thorough examination of the prior art.

What is a design dispute?

A design dispute is an avenue provided by the Designs Act 2003 to enforce one’s right as the owner of a registered design against an infringing party. Design infringement may occur even without knowledge of “prior art” on the part of the infringing party.

Who can own a registered design?

In cases of design disputes, design registration can be disputed if an ineligible party is deemed the owner of the design. In Australia, the following parties are eligible to own registered designs:

  • The actual author of the design
  • The employer of the designer
  • The party who commissioned to have the design made
  • A person to whom the designer assigned the design in writing

In cases of two or more parties having interest in the design, the application must be made jointly and under all the names of the parties involved.

Steps in addressing design disputes

Certification

For the owner of the registered design, the first step is to have the registered design certified, because only certified registered designs can be enforced in Australia. Certification entails a substantive examination in contrast to the formalities examination for registration. To be certified, the Designs Office will check if the design is new and not offensive (containing graphic words or images). The design should also be free of any protected emblems (such as flags and signets).

Scenario 1. Addressing an infringing party

To address an infringing party, the design must be in force. Certification is required for a registered design to be enforced.

After registration and certification, a cease and desist letter to the infringing party is typically sufficient to stop the infringing behavior; otherwise, alternative dispute resolution and sometimes litigation ensues. Note that the cease and desist letter should be written with utmost care, because if the claims in the letter are proven groundless, the accused may be awarded costs. Conversely, if infringement is proven, the infringing party may be liable to pay for damages or an account of profits.

Scenario 2. Addressing a cease and desist letter

Upon receiving a cease and desist letter, one may be involved in dispute settlement through alternative dispute resolution routes, such as negotiation, mediation or arbitration. An application may be sought to have the existing registered design revoked by proving that the design being infringed should not have been registered in the first place. Any party can request IP Australia re-examine a registered design provided that they have information on relevant designs used prior to the filing date of the contested registered design.

The role of an IP attorney in design disputes

The services of an experienced IP attorney is invaluable in design disputes. Your IP attorney can:

  • File your design and seek to have it certified.
  • Draft a cease and desist letter with careful consideration.
  • Represent the client in cases of alternative dispute resolution or advise the client in conjunction with legal advice if the matter escalates to design litigation in court.