- 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
18.6. Prior publication or use exceptions: Grace Period
After amendments in 2021, s 17(1) of the Act, depending on the date the design was filed, provides that for the purposes of deciding whether a registered design (subject design) is new and distinctive, any publication or use of a design, by the owner or designer, to which the subject design is identical or substantially similar in overall impression, made within 12 months before the priority date of the subject design, can be disregarded from the prior art base. This time-period is known as the ‘grace period’.
It is important to note that the grace period will only be relevant to registered designs which were filed on or after 10 March 2022, or otherwise have a priority date on or after 10 March 2022.
Even if a design application was filed on or after 10 March 2022, this does not mean that the grace period will apply to all prior publications and uses.
If the relevant publication or use occurred before 10 March 2022, the grace period provisions do not apply. However, interested persons may wish to consult Parts 18.2 (international exhibitions) and 18.3 (unauthorised disclosures) of this Manual.
For design applications filed before 10 March 2022, please see also Parts 18.2 and 18.3 of this Manual regarding the predecessor version of s 17.
The grace period provision will only apply to publications or uses occurring on or after 10 March 2022.
This means that for publications or uses to be disregarded under the grace period, they must have occurred on or after this date.
The grace period provision has some other conditions and limitations. It only applies to designs published or used by:
- A relevant entity (s 17(1)(a)) and/or
- A person or body that derived or obtained the design from a relevant entity (s 17(1)(b)).
And, it does not cover publications made by the Registrar of Designs or publications made on equivalent overseas designs databases. If a person has a publication on a foreign register outside of Australia, which was published in the 12-month period, this will continue to pose difficulties for an owner and these publications may not be disregarded.
What is a 'relevant entity'?
‘Relevant entity’ is defined in s 17(1D), and includes registered owners of a design, their predecessors in title, and the designers who created the design.
Where the use or publication was within the 12-month period leading up to the priority date and it was by the relevant entity, the use or publication may be disregarded.
How is a design is 'derived' or 'obtained' from a relevant entity?
If a person has been directly provided or shown a design by the relevant owner, then they have derived or obtained that design from a relevant entity. It is also possible for a design to have been indirectly derived or obtained.
‘Derivation’ may be clear from the information included as part of the prior art and as part of declaratory material provided by owners to the Registrar. For example, the publication of an online article may feature an image and make a direct reference to the company that owns the registered design under examination. Further, it may be clear from website information that the owner is directly connected to a particular website. Information that shows that a design is derived from an owner should be presented with a declaration.
Derivation of third party-publications is also presumed when the owner of the subject design has established that they published relevant prior art before the third-party publication(s).
Subsection 17(1C) indicates that a cited design (called the ‘other design’) that is published (or used) by a third party who is not a relevant entity is presumed to have been derived or obtained from a relevant entity once the conditions set out in both s 17(1C)(a) and 17(1C)(b) are established.
- Paragraph 17(1C)(a) requires the registered owner to show a relevant entity published or publicly used a design (called the ‘first design’) before the publication or use of the ‘other design’ (third-party citation).
- Paragraph 17(1C)(b) requires the ‘other design’ be identical, or substantially similar in overall impression to, the ‘first design’.
The owner of the subject design is able to demonstrate that they first published a design to which the subsequent third-party publications are identical or substantially similar in overall impression. The ‘first design’ does not need to be identical to the registered design in question. This allows a designer to register a slight variation of their earlier published design and rely on the grace period provision.
Some examples of persons who, depending on the evidence and specific circumstances, might have derived or obtained a design from a relevant entity include:
- Distributors of the product on behalf of the relevant entity
- Customers of the relevant entity
- Marketing agents or advertising partners of the relevant entity
- Employees of the relevant entity who have performed an unauthorised disclosure of the design to public
- Persons who publish a review of the product
- Persons who view the design at an international exhibition and publish photographs of the design
- Persons who have viewed the product online or in a store and photographed the design and shared their own photographs or links to material about the product on social media.
Publications or uses of a design by an IP office to which the grace period does not apply
Some third party-publications that have occurred in the grace period and that may have been derived or obtained from a relevant entity still cannot be disregarded from the prior art base because of s 17(1B).
Subsection 17(1B) provides that the grace period may not apply to publications made by:
- The Registrar of Designs, that is the Australian Registrar of Designs, (for example designs published on Australian Design Search). Note also that designs that have an earlier priority date (to the subject design) but which are not published during the grace period continue to be relevant prior art and will be cited because of s 15(2)(c)
- A person or body who has a similar function to the Registrar of Designs (publications made on overseas databases by a foreign, international or regional IP offices).
Accidental publications or publications made by a foreign IP office under a law relating to a different IP Right (for example, a publication of a design within a patent specification) may however be able to be exempt from the prior art base under the grace period. The registered owner will be required to demonstrate that any publication made on a designs database was in fact made in error by the foreign IP office.
To summarise, the grace period would not apply to exclude publications of a design by:
- the Australian Registrar of Designs
- other foreign national IP offices
- international organisations (such as WIPO) or
- regional organisations (such the European Union Intellectual Property Office).
What happens if there is independent creation by a third party?
Subsection 17(1C) allows for a third party to rebut the presumption of derivation and show that prior art is not covered by s 17(1). This requires that the third party establish that the creation of the ‘other design’, and its subsequent publication or use, occurred without reference to, or knowledge of, the ‘first design’. A relevant third party will have the onus of demonstrating that the prior art was independently created.
Where independent creation is demonstrated this will mean that the design remains as prior art. Therefore, the subject design may not be new and distinctive.
Where independent creation is asserted by a third party, or is at issue, it will almost invariably require the file being escalated to a hearing, especially where there is an inter partes dispute, or brought to the attention of the Deputy Registrar.
Arguments around independent creation will invariably require declaratory evidence about the independent creation, explaining in detail how the relevant prior art design was conceived, the design process and other relevant matters.
Information and material regarding independent creation of a design may be provided to IP Australia under s 69, see also Part 8.7 of this Manual. Any person may request examination of a registered design by the usual processes. For more information about examination please see Part 8 of this Manual.
Applying the grace period as part of an examination
Examiners will not apply the grace period provision based solely on examination research or a simple assertion by an owner in a letter. The owner of the subject design will be required to submit relevant information about the prior publication or use in a declaration.
This relevant information and declaration can be supplied in response to an examination report which has cited design(s) that fall in the grace period. The usual prescribed period for the completion of an examination applies, see reg 5.04; if the owner wishes to provide a declaration in response, these timelines will need to be met. Alternatively, and optionally, declaratory information informing the office of when prior publication occurred can be submitted at any time leading up to the examination of the design.
Standard examination procedures apply when a declaration has not been submitted before an examination occurs. Where the examiner finds citations and these fall in the grace period and are eligible to be disregarded from the prior art base, the examiner will issue a 1st report, and include general information about the grace period provision. Where an owner, in response to a 1st report, asks for a citation to be disregarded from the prior art base under the grace period provision, they should submit information and evidence in declaratory form that supports this claim.
If declaratory information has been submitted before the examination takes place, the examiner will assess this detail as part of the examination assessment. If the material is sufficient to show that the grace period provision should be applied, the examiner will note on the file that there was a potential citation(s) but also note that it has been overcome because of the grace period, and where appropriate issue a certificate of examination.
Where an owner has provided a declaration and further details are required in the declaration in order for the grace period to apply, the examiner will explain this and describe the details in the examination report.
The types of evidence which may be useful, though not necessarily always required or sufficient, to support a claim that the grace period should apply to exclude prior art include:
- Dated screen captures of earlier publications.
- WayBack Machine screen captures of websites controlled by the owner at the relevant time.
- Declaratory confirmation that the owner at the relevant time controlled the social media account or website at the relevant time of a publication.
- Sales information and marketing plans; this could include dated information about scheduled product launches or other key dates for release of marketing material.
- Screen captures of the social media accounts and histories of administrator(s) or controller(s) of those accounts.
- Copies of internal emails with instructions for staff or external providers; this could include instructions to make designs publicly available on particular dates.
- Information and evidence which establishes that there has been an unauthorised disclosure of the design.
- Photographs or other media, such as news articles corroborating a public availability at a relevant time.
Every case will be assessed on its own facts and where appropriate the Registrar may request more information to establish the applicability of the grace period provision. The most useful information and material will usually that which is clearly dated and clearly showing the design was published on a particular date. The person making the declaration should be a person who would have direct knowledge of the relevant material and events.
Please see Annex 1 to this Part for an example of declaration text regarding prior publication and the grace period; please note that not all of the material in this example declaration would always be required or sufficient, though it may be useful. The text for a declaration should be inserted into the appropriate IP Australia declaration form, the declaration then signed and submitted; the IP Australia declaration form is available here. It is always useful for an owner of a design to consider approaching an IP professional especially they have any doubts about what to provide in their declaration.
Information on the Register regarding the grace period
The Registrar may, where appropriate and practical, make a notation on the Register of the fact that a particular registered design has been registered because of the grace period.
|Amended Reason||Date Amended|
Grace period changes.