- 1. Design rights
- 1.1. Design rights: overview
- 1.2. What a design right protects
- 1.3. Why protect a design?
- 1.4. How designs are protected in Australia?
- 2. Application for registration
- 2.1. Application for registration: overview
- 2.2. Registration process
- 2.3. Submitting an application
- 2.4. Minimum filing requirements
- 2.5. Who is entitled to be a registered owner?
- 2.6. Types of applications (s 22)
- 2.7. Request for registration
- 2.8. Further designs
- 3. Fees
- 3.1. Fees: overview
- 3.2. Application fees
- 3.3. Renewal fees
- 3.4. Examination fees
- 3.5. Hearing fees
- 3.6. Fees for extensions of time
- 3.7. Refunds
- 4. Formalities assessment
- 4.1. Formalities assessment: overview
- 4.2. The ‘Formalities check’ and ‘Formal requirements’
- 4.3. Formalities notices
- 5. Applicant details
- 5.1. Applicant name: overview
- 5.1.1. Is the applicant a person?
- 5.1.2. Individual (Australian and overseas, including joint owners)
- 5.1.3. Australian company (Pty Ltd, Ltd)
- 5.1.4. Strata company, owners corporation, body corporate etc
- 5.1.5. Government entity
- 5.1.6. Incorporated association
- 5.1.7. Overseas entity (AG, S.r.L etc)
- 5.1.8. Several applicant names, multiple designs
- 5.1.9. Joint owner names with ABN
- 5.1.10. Partnership
- 5.1.11. Trust/trustee
- 5.1.12. Business names and 'trading as'
- 5.1.13. Applicant name and design owner
- 5.2. Applicant address
- 6. Representations
- 6.1. Representations: overview
- 6.2. General requirements
- 6.3. Formal compliance
- 6.4. Product
- 6.5. Consistency
- 6.6. Text
- 6.7. Common designs
- 6.8. Drawings
- 6.9. Photographs
- 6.10. Specimens or 3D models
- 6.11. Different views
- 6.12. Environmental views
- 6.13 Pairs and mirror images
- 7. Classification
- 7.1. Classification: overview
- 7.2. Classification systems
- 7.3. Finding the right class
- 7.4. Cases of doubt
- 7.5. More than one possible classification
- 7.6. Multiple products or designs
- 8. Examination and certification
- 8.1. Examination and certification: overview
- 8.2. Examination and certification processes
- 8.3. Requesting examination
- 8.4. Third party initiated examinations
- 8.5. Concurrent requests for examination
- 8.6. Expedited examination
- 8.7. Material provided by a third party
- 8.8. Relevant material that must be considered
- 8.9. Time frame for completion of examination and last-minute responses
- 8.10. Withdrawal of request for examination
- 8.11. Notice of intention to certify
- 8.12. Requests for examination after certification
- 8.13. Further examination reports
- 8.14. Revocation
- 8.15. Examination hearings
- 9. Identifying the design
- 9.1. Identifying the design: overview
- 9.2. Overall appearance
- 9.3. Visual features
- 9.4. Variable visual features
- 9.5. What cannot be a visual feature
- 10. Product
- 10.1. Product: overview
- 10.2. Identifying the product
- 10.3. Things that are not products
- 10.4. Things that are not different products
- 10.5. Product name
- 10.6. Manufactured or handmade
- 10.7. Component part of a complex product
- 10.8. Assembled set or kit
- 10.9. Indefinite dimensions
- 10.10. Examples - things that are / are not products
- 11. Excluded designs
- 11.1. Excluded designs: overview
- 11.2. Priority date of excluded designs
- 11.3. Checking the priority status of an excluded design
- 11.4. Designs that cannot be excluded
- 11.5. Registration/publication requests
- 12. Section 43 refusal to register
- 12.1. Section 43 refusal to register: overview
- 12.2. Medals
- 12.3. Anzac
- 12.4. Currency
- 12.5. Scandalous content
- 12.6. Arms, flags, emblems etc.
- 12.7. Olympic symbols
- 12.8. Integrated circuits
- 13. Assessing newness and distinctiveness
- 13.1. Assessing newness and distinctiveness: overview
- 13.2. Product name and intended use
- 13.3. Identifying the product
- 13.4. Test for newness
- 13.5. Test for distinctiveness
- 13.6. Substantially similar in overall impression
- 13.7. How the design is displayed
- 13.8. Other visual features
- 13.9. Searching
- 14. Section 19 requirements for distinctiveness
- 14.1. Section 19 requirements for distinctiveness: overview
- 14.2. Similarities and differences
- 14.3. State of development of the prior art base
- 14.4. Statement of newness and distinctiveness
- 14.5. Amount, quality and importance
- 14.6. Freedom of the creator of the design to innovate
- 14.7. Familiar person / Informed user
- 15. Statement of newness and distinctiveness
- 15.1. Statement of newness and distinctiveness: overview
- 15.2. Formalities assessment of the SoND
- 15.3. Amendments to the SoND
- 15.4. Using the SoND to assess distinctiveness
- 16. Standard of the familiar person / informed user
- 16.1. Standard of the familiar person / informed user: overview
- 16.2. Identifying the familiar person / informed user
- 16.3. Declarations about the familiar person / informed user
- 16.4. Familiarity with the product
- 16.5. References to European and UK decisions
- 16.6. Familiar person’s / informed user’s knowledge base versus prior art base
- 17. Prior art base
- 17.1. Prior art base: overview
- 17.2 Publicly used in Australia
- 17.3. Published in a document within or outside of Australia
- 17.4. Trade marks and patents as citations
- 17.5. Establishing the publication date
- 17.6. Designs disclosed in applications
- 18. Prior publication or use exceptions
- 18.1. Prior publication or use exceptions: overview
- 18.2. Exhibitions
- 18.3. Unauthorised disclosures
- 18.4. Disclosure to government
- 18.5. Copyright
- 18.6. Grace Period
- Annex A - An example of a grace period declaration
- 19. Priority date
- 19.1. Priority date: overview
- 19.2. Convention application
- 19.3. Multiple bases for priority
- 19.4. Plural designs
- 19.5. When priority must be asserted
- 19.6. Excluded designs
- 19.7. Converted applications
- 19.8. Applications by an entitled person
- 20. Convention priority
- 20.1. Convention priority: overview
- 20.2. Convention countries
- 20.3. Time limit to claim convention priority
- 20.4. Assessing convention priority claims
- 20.5. Convention priority for excluded designs and applications that include more than one design
- 20.6. Basic application
- 20.7. Requesting the basic application
- 20.8. Relevance of the basic application to examination
- 21. Satisfied
- 21.1. Satisfied: overview
- 21.2. Meaning of ‘satisfied’
- 21.3. ‘Satisfied’ as to prior art base
- 21.4. Reasonable doubt, balance of probabilities and uncertainty
- 21.5. ‘Not satisfied’
- 22. Amendments
- 22.1. Amendments: overview
- 22.2. Amending an application
- 22.3. Amending a registration
- 22.4. Inclusion of matter not in substance disclosed
- 22.5. Increasing the scope of the design registration
- 22.6. Other types of amendments
- 23. Extensions of time
- 23.1. Extensions of time: overview
- 23.2. Legal principles
- 23.3. Error or omission by the Registrar
- 23.4. Error or omission by the customer
- 23.5. Circumstances beyond the customer’s control
- 23.6. Registrar’s discretion
- 23.7. Protection for third parties
- 23.8. Period of extension
- 23.9. Extensions process
- 23.10. Advertisement
- 23.11. Request from an unrecorded new owner
- 23.12. Extension of the convention priority period
- 24. Assignments (and other interests)
- 24.1. Assignments and other interests: overview
- 24.2. Recording changes of ownership
- 24.3. Possible complications
- 24.4. Bankruptcy and winding up
- 24.5. Registering other interests
- 25. Ownership disputes
- 25.1. Ownership disputes: overview
- 25.2. Disputes between joint applicants
- 25.3. Disputes where a non-applicant claims ownership
- 25.4. Disputes where some designs have been registered or published
- 25.5. Disputes about recording a change of ownership before registration
- 25.6. Typical situations where ownership disputes arise
- 25.7. Revocation after an ownership dispute
- 26. Production of documents under s 61(1)
- 26.1. Production of documents under s 61(1): overview
- 26.2. Powers of the courts
- 26.3. Powers of the Registrar
- 26.4. Precedent
- 26.5. Who access is granted to
- 26.6. Access in ownership disputes
- 26.7. Where inspection can take place
- 26.8. Right of lien
- 26.9. Draft undertaking for access
- 27. Publication and file access
- 27.1. Publication and file access: overview
- 27.2. Designs not publicly available
- 27.3. Legal exceptions
- 27.4. Freedom of information
- 27.5. Prohibition orders
- 28. Hearings
- 28.1. Hearings: overview
- 28.2. Filing evidence
- 28.3. Disputes over whether the design was new and distinctive at the priority date
- 28.4. Interface with court proceedings
- 29. Glossary
- 30. Citation index
- 31. Keyword index
- 32. Classification listings
- Class Heading Summary
- Class 01 Foodstuffs
- Class 02 Articles of clothing and haberdashery
- Class 03 Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 Brushware
- Class 05 Textile piecegoods, artificial and natural sheet material
- Class 06 Furnishing
- Class 07 Household goods not elsewhere specified
- Class 08 Tools and hardware
- Class 09 Packages and containers for the transport or handling of goods
- Class 10 Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 Articles of adornment
- Class 12 Means of transport or hoisting
- Class 13 Equipment for production, distribution or transformation of energy
- Class 14 Recording, communication or information retrieval equipment
- Class 15 Machines not elsewhere specified
- Class 16 Photographic, cameras, cinematographic and optical apparatus
- Class 17 Musical instruments
- Class 18 Printing and office machinery
- Class 19 Stationery and office equipment, artists and teaching materials
- Class 20 Sales and advertising equipment, signs
- Class 21 Games, toys, tents and sporting goods
- Class 22 Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 Fluid distribution equipment, sanitary, heating, ventilation and air conditioning equipment, solid fuel
- Class 24 Medical and laboratory equipment
- Class 25 Building units and construction elements
- Class 26 Lighting apparatus
- Class 27 Tobacco and smokers supplies
- Class 28 Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 Devices and equipment against fire hazards, for accident prevention and rescue
- Class 30 Articles for the care and handling of animals
- Class 31 Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 Graphic symbols and logos, surface patterns, ornamentation
- 33. Designs (Formal Requirements for Designs Documents) Instrument 2022
18.5. Prior publication or use exceptions: Copyright
Copyright protection is usually lost when a design is registered. If the design is examined, the publication of artistic work previously covered by copyright may be a relevant citation, resulting in the registered design not being considered new and distinctive.
However, there is one exception to this general rule. It is possible to retain copyright protection for a 2-dimensional artistic work while obtaining design protection for this artistic work applied to the surface of a product – for example, a painting printed on a t-shirt. The t-shirt design may be considered new and distinctive when compared with the publication of the painting itself. Note that this is limited to the reproduction of a 2-dimensional artistic work in a 3-dimensional form.
Reliance on s 18
Where a design has been examined and the examiner has raised a ground for revocation based on a lack of newness or distinctiveness, the owner may seek to use s 18 to have the relevant citation excluded from the prior art base.
Section 18 provides for the publication or use of an artistic work to not be taken into account when determining whether a registered design is new and distinctive when compared to the prior art base. In other words, the publication or use of an artistic work does not invalidate a subsequent design registration.
The effect of s 18 is to render an otherwise invalid registered design valid. Therefore, the owner must disclose all relevant facts and submit evidence to support their claim. Where an owner appears to be evasive in providing relevant material (noting that redaction of documents to exclude commercially sensitive information would be acceptable), the examiner is entitled to conclude that they are not satisfied of the owner’s s 18 claim and maintain the newness or distinctiveness ground for revocation.
There are 2 aspects to s 18. First, there is the issue of whether the basic conditions have been met. Secondly, there is the issue of whether s 18 is not available because the artistic work has been ‘applied industrially’.
For an owner to rely on s 18, all these criteria must apply:
- There must be a relevant artistic work in which copyright subsists.
- A corresponding design application must be made.
- The design application must be made by, or with the consent of, the owner of the copyright. This includes the design owner having derived title in the design from the copyright owner of the relevant artistic work.
- The citation, being the publication of the design as an artistic work, must not show that the design has been applied industrially.
1. Artistic work
Under the legislation there are the following categories of ‘artistic work’:
- paintings, sculptures, drawings, engravings or photographs
- buildings or models of buildings
- works of artistic craftsmanship.
‘Artistic work’ does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.
Where the alleged artistic work falls within the first 2 of the categories above, it does not need to have any artistic quality whatsoever. Any painting, sculpture, drawing, engraving or photograph is an artistic work by definition. For example, an ordinary photograph of an object without any creativity or artistry is itself considered an artistic work. Images on the internet would fall within this category – noting that the copyright will usually lie in the original image rather than the image displayed on the internet.
Buildings or models of buildings are also artistic works by definition and do not need to have artistic quality. Note that the Copyright Act defines a building as being ‘a structure of any kind’. A half-sized tennis court has been held to be a building (Half-Court Tennis v Seymour (1980) 53 LFR 240). Buildings also include portable buildings such as sheds, pre-constructed swimming pools and demountable buildings (see Copyright Act, s 77(5), which excludes these structures from the definition of ‘buildings’ for the purpose of s 77 of the Copyright Act, ‘Application of artistic works as industrial designs without registration of the designs’.
Whilst the first two categories do not require artistic quality, publications in the prior art base first need to meet one or more of the categories. In Artisent, LLC  ADO 3 it was determined that a physical prototype of the product bearing the design was not a sculpture and therefore did not meet the meaning of an ‘artistic work’. CAD images which were used to create the physical prototype were considered literary works and also did not qualify. When considering the definition of an ‘artistic work’, the officer stated at 54:
So, whilst artistic merit is not a consideration, artistic intention is.
And at 62:
I find that the prototypes in this case were casts or models made for purposes of sculpture. Both legislative and artistic intention would point against them being sculptures. The evidence shows that the prototypes were produced either for the purposes of putting pictures of them in the Catalogue, or as a step in the production process.
The officer also found that whilst the physical prototype was photographed, the photograph was not acceptable as an ‘artistic work’ as the prototype itself was not.
A ‘work of artistic craftsmanship’ must have been created with a primary intent of being artistic, and it must involve craftsmanship. The presence of distinctive visual features is not sufficient to deem a piece of work ‘a work of artistic craftsmanship’. There must be persuasive evidence of intent to create an artistic work in line with the normal meaning of ‘artistic’.
The decision in State of Escape Accessories Pty Limited v Schwartz  FCA 160  (State of Escape), in determining whether a bag was a work of artistic craftsmanship, applied principles previously settled by the High Court in Burge v Swarbrick  HCA 17:
In order to qualify as a work of artistic craftsmanship under the Copyright Act, the work must have a ‘real or substantial artistic element’ (Burge at 52).
In considering whether a work is one of ‘artistic craftsmanship’, the beauty or aesthetic appeal of the work is not determinative. The Court must also weigh in the balance the extent to which functional considerations have dictated the artistic expression in the form of the work (Burge at 83–84).
2. Corresponding design
The concept of the citation being an ‘artistic work’ is only relevant where the design registration is a ‘corresponding design’. A corresponding design is the physical application of what is shown in an artistic work. It cannot be the artistic work itself.
The Copyright Act at s 74 defines ‘corresponding design’ as follows:
1. In this Division:
corresponding design, in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.
2. For the purposes of subsection (1):
embodied in, in relation to a product, includes woven into, impressed on or worked into the product.
A design registration is not a corresponding design when it is the same thing as the artistic work. For example, if the relevant artistic work is a drawing of a handbag, the design registration needs to be for that design applied to an actual handbag.
The decision in Water Recreations v Fairmile  42 ALR 273 stated:
There is no question in my mind that the artistic work (or more correctly artistic works) of which Mr Larry Timbes is said to be the author and in respect of which it is claimed he is the owner of the copyright under the Copyright Act 1968, is a series of drawings of waterslide flume components and it is those drawings which the plaintiff, with Mr Timbes’ consent, applied on 7 January 1981 to register under the Designs Act 1906–1973. Those several applications were not applications for the registration of a corresponding design of an artistic work, but were applications for registration of the artistic work itself.
Had the artistic work been a model of a flume component sculptured or otherwise crafted by Mr Timbes then drawings or plans which when applied to any article or substance which may result in a reproduction of the artistic work would be a ‘corresponding design’ in relation to the artistic work … I fail to see how [there can be a ‘corresponding design’] where the design for which registration is sought is in fact the artistic work. In this case Mr Timbes was the author of a design which had its manifestation in a drawing and the plaintiff sought registration for the ‘conception or suggestion as to shape, configuration, pattern or ornament’ conveyed by that drawing. The plaintiff did not apply to register a corresponding design of an artistic work. [Emphasis added]
3. Consent of the copyright owner
Where the copyright owner and the design owner are different, the design owner will need to show that they made the design application with the ‘consent’ of the copyright owner.
Consent must have been given (or implied) before the design application is made. This will usually require a declaration of some sort from the owner of the design registration, with a timeline of events and an explanation of all the relevant facts. A document evidencing that consent – such as an assignment, deed or other evidence of transfer – may also be useful.
If someone creates a design in the course of their employment or contract, the employer is generally entitled to own the design. In that scenario the author of the design does not assign this right to the owner, as it stems directly from s 13(1)(b). There are cases where the author owns the copyright but the employer is entitled to own the design. In such cases the author (as the copyright owner) must give consent to the design application.
4. Applied industrially
If the conditions of s 18(1) are met, attention then turns to whether there has been previous use by (or with the consent of) the copyright owner of the artistic work ‘applied industrially’. This means selling, leasing or offering for sale or lease products to which the corresponding design had been applied industrially. Acts outside these categories cannot be used to refuse a s 18 claim.
Section 18 defines ‘applied industrially’ by reference to reg 12 of the Copyright Regulations 2017:
12 Circumstances in which design is taken to be applied industrially—section 77 of the Act
(1) For the purposes of section 77 of the Act, a design is taken to be applied industrially if it is applied:
(a) to more than 50 articles; or
(b) to one or more articles (other than hand‑made articles) manufactured in lengths or pieces.
(2) For the purposes of paragraph (1)(a), any 2 or more articles are taken to constitute a single article if:
(a) they are of the same general character; and
(b) they are intended for use together; and
(c) the same design, or substantially the same design, is applied to them.
(3) For the purposes of this section, a design is taken to be applied to an article if:
(a) the design is applied to the article by a process (whether a process of printing or embossing or another process); or
(b) the design is reproduced on or in the article in the course of the production of the article.
The underlying principle is that when a design of a physical thing (as an artistic work) is applied industrially, transitioning from concept to being manufactured or hand-made (as a product), design protection is appropriate.
Indicators that a design has been industrially applied include:
- Publication or offer for sale by an entity involved in industrial exploitation, where the relevant product is consistent with the type of products sold by that entity – that is, publication or offer for sale by an entity which generally sells similar types of goods.
- Goods bearing the artistic work that have clearly been mass produced.
Regulation 12 of the Copyright Regulations deems certain activities as constituting ‘applied industrially’ but, importantly, does not provide an exhaustive definition of ‘applied industrially’. For example, it says that any design that has been applied to more than 50 articles is taken to have been industrially applied. However, it is possible that a design might be considered to have been industrially applied where it has been applied to fewer articles (including only one) depending upon the facts of the case, including the product bearing the design. This was confirmed in Safe Sport v Puma (1985) 4 IPR 120.
Limits on the application of s 18
A design owner cannot seek to have a citation excluded under s 18 if the artistic work has been used in certain ways by or with the consent of the copyright owner before the priority date.
Use previously made of the artistic work
Under the Act, ‘any use previously made of the artistic work’ is excluded from the assessment of newness and distinctiveness (s 18).
The only thing that is excluded from consideration under this part of s 18 is the product to which the artistic work has been applied. The artistic work itself or simple reproductions of that artistic work are not excluded.
The only thing that is excluded is ‘use’ of the artistic work. The word ‘use’ has a similar meaning to ‘used’ in s 15(2)(a): it involves the application of the artistic work to products so that there is a product bearing relevant visual features. (Note that this also provides the environment for consideration of ‘applied industrially’ in s 18(2)(a).)
Previous use with consent – acquiescence
Generally speaking, if a third party uses an artistic work without the consent of the copyright owner, this cannot be used to invalidate a subsequently filed corresponding design.
It should be noted that the owner might be prevented from bringing any action for infringement where all the following conditions apply:
- A third party has made previous relevant use of the artistic work.
- The copyright owner knew, or ought reasonably to have known, that such use was occurring.
- The copyright owner took no action to stop that use, or to stop that use continuing.
That is, if a copyright owner allows a competitor to develop a market for a product before applying for design protection, they may nevertheless be able to later obtain a valid design. However, they will probably have difficulty in enforcing it against that person.
See, for example, Grundt v Great Boulder Pty Gold Mines Ltd  59 CLR 641 at 674.
Prior publication in a patent specification or design
A particular situation may arise where:
- a design application is filed after a corresponding patent application or design is published
- the owner asserts that they are the copyright owner of the artistic work published in the patent or design
- the artistic work has not been industrially applied.
Where the artistic work comprises the drawings in an earlier patent or design, and the design in the new design application (the ‘subject design’) comprises substantially the same drawings, the subject design cannot be said to be a corresponding design (see Water Recreations v Fairmile (1982) 42 ALR 273). However, if the subject design can be considered to be a corresponding design, the earlier publication in a patent or design application does not necessarily fall within the industrially applied ‘acts’. This may result in the owner of the subject design meeting the s 18 requirements and the prior art being excluded from the prior art base. This may occur even if the subject design is filed years after the earlier publication.
Where the applicant asserts that the drawings in the earlier registered patent or design are merely representations of an artistic work, they will need to provide full details of the relevant work to show:
- that the artistic work exists
- that the artistic work pre-dated the drawings and the drawings have always been representations of the artistic work
- the full characterisation (depiction or description) of the artistic work
- that the artistic work has not been applied industrially.
Where the subject design corresponds to the drawings in the earlier patent or design but differs from the original artistic work, the drawings of the earlier patent or design would not necessarily be excluded from a s 18 entitlement claim. In other words, the applicant can still rely on s 18 to exclude the drawings as prior art if there are some differences – for example, showing the same thing from different angles.
Where an artistic work has been created as a physical thing, and subsequently a patent or design has been applied for, it will be presumed (unless proven otherwise) that the artistic work has been applied industrially.
|Amended Reason||Date Amended|