Registered designs are a relatively cost effective and underutilised form of IP protection. Registered designs protect the aesthetic or visual features of a product, in contrast to patents that protect the functionality of a product or process.
There are a number of important differences between Australian and New Zealand design law which became more pronounced when the Designs Act 1906 (Cth) was replaced with the new Designs Act 2003 (Cth) in Australia. In contrast to Australia, New Zealand designs law has undergone limited change since the Designs Act 1953 (NZ) became law and there is currently no indication that this is likely to change any time soon. Hence, it is important to understand the differences between the two systems when filing in either country.
Examination
One major change that occurred under the new Australian Designs Act 2003 (Cth) was the removal of mandatory examination of all registered designs. Prior to the new Designs Act 2003 (Cth) all registered designs were required to be examined in order to be registered – this is no longer the case. Currently in Australia, registered design applications are only checked for formalities and then registered. They can stay in this format for the rest of their maximum lifespan. However, in order to be enforceable against others, they need to be examined, since a registered design is not enforceable until it has been examined and passed the examination process.
A request for examination can be submitted at any time in the registered designs maximum 10 year life. What many filers in Australia choose to do is file the registered design application, get it registered, and only request examination if necessary, for instance if an infringer comes onto the market and the owner of the design wishes to enforce their rights to the design.
In contrast, in New Zealand, all registered designs are automatically examined and are hence enforceable once registered.
Term of protection
Another difference between the Australian and New Zealand design system involves the maximum term of protection. In Australia, there is a maximum of 10 years of design protection, in New Zealand up to 15 years of design protection is allowed. Both of these terms commence from the filing date of the design application. In Australia, the initial period of protection is 5 years, with the option of extending protection to the full 10 years by payment of renewal fees at the 5 year mark. In New Zealand, fees are payable at the 5th and 10th year resulting in the maximum 15 years of protection.
Standards for registration
The criteria placed on a registered design varies between the two countries. In Australia a design must be ‘new and distinctive’, while in New Zealand it must be ‘new or original’.
In Australia, a design must be new and distinctive over the prior art base. The prior art base consists of:
- designs publicly used in Australia;
- designs published in a document within or outside Australia; and
- designs that were disclosed in a design application that has an earlier priority date, and which were published after the priority date of the design application being applied for.
In New Zealand, a design must be new or original over any design that has been registered or published in New Zealand before the date of filing of the design application.
Generally, the threshold for originality in New Zealand is considered lower than in Australia resulting in certain borderline applications being registrable and enforceable in New Zealand and not being enforceable in Australia due to the higher standard of ‘new and distinctive’ imposed on Australian registrations compared to the requirement a design be ‘new or original’ in New Zealand.
Functionality
In New Zealand, an applicant cannot file a registered design for a product that is purely functional. However, this is not the case in Australia. Hence, if the shape of a product is purely dictated by its function it will not be registrable in New Zealand however it may be in Australia.
In Australia, a registered design application may be accompanied by a ‘statement of newness and distinctiveness’. Such a statement can claim only certain aspects of the design and can include reasonably complex information. Certain aspects of the design can also be disclaimed.
Similarly, in New Zealand a registered design application can include a statement of novelty that can claim only certain aspects of the design, and disclaim others.
Both countries allow for the claiming of specific aspects of the design, including any of the shape, configuration, pattern and/or ornamentation of the registered design as applied to an article.
Grace periods?
Generally neither Australia nor New Zealand offer a grace period for designs. A grace period is a period of time in which one may disclose their design to the public prior to filing a design application without invalidating their design application for lack of ‘newness’.
If you would like further advice regarding registered designs in Australia and/or New Zealand please feel free to contact one of our experienced patent attorneys at Baxter IP.
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