Commencing Design Infringement Proceedings in Australia

Designs Act 2003 provides strong protection for registered design owners, including the right to bring infringement proceedings. But not every dispute can head straight to court, i.e. there are rules, requirements, and strategies that determine when and how infringement proceedings can begin.

Who can bring infringement proceedings?

Under section 73(1) of the Designs Act, legal proceedings for design infringement can only be initiated by parties who have recognized standing. This includes the registered owner of the design, namely, the individual or entity officially listed as the rights holder on the Designs Register. Their status as the owner grants them the authority to enforce their rights and take action against unauthorized use.

That said, an exclusive licensee also has the legal capacity to commence proceedings. This refers to a person or organization that has been granted exclusive rights to use the design, typically through a formal licensing agreement. These rights may cover specific uses, territories, or commercial activities, depending on the terms of the license.

If you fall into either of these categories, registered owner or exclusive licensee, you are entitled to initiate legal action against any party suspected of infringing the registered design. This ensures that those with a legitimate interest in the design’s protection can actively defend it through the appropriate legal channels.

Exclusive Licensees

If it’s an exclusive licensee bringing the claim, the law imposes an extra safeguard. The registered owner must be joined in the proceedings, i.e. either as a co-plaintiff or as a defendant.

Why? This is because the owner ultimately holds the underlying rights, and the law wants to ensure they’re part of the action or at least notified. Importantly, if the owner is named as a defendant but chooses not to participate, they are not liable for legal costs under section 73(2B).

Where can proceedings be started?

Legal proceedings for design infringement may be initiated in a prescribed court, which typically includes the Federal Court of Australia or the Federal Circuit and Family Court of Australia. These courts are designated to handle intellectual property matters and are well-equipped to manage the procedural and substantive complexities involved.

Alternatively, proceedings may also be commenced in any other court that holds jurisdiction over the matter, provided it is authorized to hear intellectual property disputes. This flexibility allows parties to choose a forum that aligns with the nature and scope of the case.

However, in practice, most design infringement cases are brought before the Federal Court. Its specialized knowledge in intellectual property law and its capacity to adjudicate intricate legal and technical issues make it the preferred venue for resolving such disputes.

Pre-Condition, i.e. Certification Before Enforcement

One of the most important points, and where many design owners get caught out, i.e. you cannot bring infringement proceedings straight after registration.

Under section 73(3), proceedings may only be initiated once-

• The design has been examined under Chapter 5 of the Act, and
• A certificate of examination has been issued.

This step, often called certification, is what transforms a registered design into an enforceable right. Registration alone gives you recognition, but until certification, you can’t sue an infringer.

This makes the timing of certification a strategic decision. Some owners request certification early, anticipating infringement risks, while others wait until they need to enforce.

Timing of Proceedings

The Designs Act imposes specific limitations on when legal proceedings for infringement can be initiated. Under section 73(4), if a design was registered through a “conversion” process under section 21, the rights holder is restricted to pursuing infringement claims only for acts that occurred after the filing date of the converted application. This ensures that protection is not retroactively applied to periods before the design was formally lodged in its new form.

Section 140 also prohibits legal action for any infringement that took place while the design registration or application had lapsed or ceased, even if it was subsequently restored. This means that the restoration of a design does not revive enforcement rights for the period during which the registration was inactive.

That said, enforcement is only possible for infringements that occurred while the design rights were valid and in force. Any alleged infringement outside that window falls outside the scope of legal protection under the Act.

What constitutes infringement?

The legal action brought in initiating proceeding is due to the result of claim of infringement. That said, infringement occurs when someone, without permission, does any of the following with a design that is identical or substantially similar in overall impression-

• Makes a product using the design,
• Sells, hires, or imports such products, or
• Uses them in a commercial context.

This is assessed from the perspective of the informed user, considering the similarities in overall impression.

Strategic considerations before commencing proceedings

Bringing legal action for design infringement is a serious step. Here are key practical factors to weigh before heading to court-

• Certification Timing, i.e. if your design isn’t certified yet, consider whether to request examination immediately. Keep in mind that the process can take time, and you can’t sue until the certificate is granted.
• Evidence Collection, i.e. courts will expect clear evidence of the registered design and its certification, how the allegedly infringing product matches or imitates the design, and proof of commercial harm (sales loss, reputational impact, etc.).
• Alternative Dispute Resolution, i.e. before launching proceedings, it may be worth exploring negotiation or settlement discussions. A well-drafted cease-and-desist letter, supported by the fact your design is certified, can often resolve the dispute without litigation.
• Costs and Risks, i.e. litigation can be expensive. While successful parties may be awarded costs, this is not always guaranteed. For exclusive licensees, the obligation to join the design owner can also complicate proceedings if the owner is unwilling to cooperate.
• Remedies Available, i.e. if successful, courts can grant injunctions (to stop further infringement), damages or an account of profits (to compensate you), or delivery up or destruction of infringing products. Knowing these remedies helps clarify whether the potential benefits justify the legal costs.

Imagine a furniture designer registers a new chair design in Australia. Soon after, a competitor begins selling a chair that looks strikingly similar.

If the design is only registered but not certified, the designer cannot yet sue. They must request examination, obtain a certificate, and only then commence proceedings.

That said, if the designer has already granted an exclusive license to a retailer, that retailer could sue the competitor, but the designer must be joined to the proceedings (as plaintiff or defendant).

Also, if the competitor sold the infringing chairs during a period when the designer’s registration had lapsed for non-payment of renewal fees, no action can be taken for those sales, i.e. even if the registration is later restored.

This shows how timing and formalities can affect a case.

The role of professional advice

While the Designs Act sets out the legal framework, navigating infringement proceedings in practice involves careful judgment. Experienced IP professionals can help assess whether a competing product is likely infringing, strategies the right time to certify a design, draft cease-and-desist letters or negotiate settlements and represent you in Federal Court if proceedings are necessary.

Trying to enforce rights without proper guidance risks wasting time, money, and potentially weakening your design rights.

If you believe your design has been copied or you want to make sure your registration is ready for enforcement, it’s best to seek professional guidance early. At LexGeneris, we assist applicants not only with registering their designs but also with managing certification and enforcement strategies.

Contact us now for a free consultation.