Australia Design Process

The formalities assessment is a crucial step in the design registration process in Australia, ensuring that a design application meets all legislative requirements. This assessment is performed by a formalities officer who checks the information provided by the applicant to ensure it is accurate, clear, and sufficient to meet the standards set by law. 

1. The Formalities Check 

This check ensures that the design application aligns with specific requirements under regulations 4.04 (for single design applications) and 4.05 (for multiple design applications). The checks include: 

A. Form and Language: The design application must be in the approved form and written in English (per reg 11.18). 

B. Scandalous Matter: The application should not contain any content that could be considered scandalous. 

C. Product Identification: For each design, the product bearing the design must be identified clearly enough to enable classification according to the Locarno Agreement. 

D. Excluded Designs: If the application involves an excluded design, it must reference the design number of the initial application 

E. Specimen Submission: If a specimen is part of the application, it must be mounted flat on an A4 sheet, stored without damage, and allow for copies to be made. 

F. Design Representation: At least one representation of the design must be provided. 

G. Number of Designs: The number of designs disclosed in the application must match the number of designs identified as separate. 

2. The Formal Requirements Check 

 Following are the key elements scrutinised under this step. 

A. Applicant and Designer Information: Full names and service address, along with contact details such as a telephone number. 

B. Design Representations: Representations of the design must include the number of designs, as well as visual clarity. 

C. Convention Claims: If priority is claimed based on a previous application, details such as the number, country, and filing date of the basic application must be included. 

D. Common Design: If the design is applied to multiple products, the application should indicate this clearly and include a product list. 

3. Specific Formal Requirements for Representations 

A. Visual Clarity: The representations must clearly display the visual features of the design, including parts referenced in the statement of newness and distinctiveness. 

B. Fully Assembled Views: The design must be shown fully assembled. 

C. No Extraneous Material: Representations should not include irrelevant content that could cause confusion. 

D. Line Drawings: If line drawings are used, they should be well-defined and precise. 

E. Consistent Image Format: The use of one image format is preferred to avoid confusion; multiple formats could lead to representations being deleted if they cause uncertainty. 

F. Photographs: Must be clear, in focus, and taken against a plain, neutral, contrasting background. 

G. Text Requirements: Any text included must be in English, legible, indelible, and limited to necessary information. SoND-like text should not be part of the representation. 

4. Why this stage is important? 

The formalities assessment stage in the design registration process is critical for ensuring that all procedural and legal standards are met before moving on to substantive examination. Here’s why it plays a crucial role- 

A. Compliance with Legislative Requirements– The formalities assessment checks whether the design application adheres to all the necessary legal guidelines, such as meeting the requirements under regulations 4.04 (for single design applications) and 4.05 (for multiple design applications). This ensures that the application is processed according to Australian design law, thereby reducing the likelihood of rejection based on formal grounds. 

B. Accuracy and Consistency of Information– This stage verifies that all information provided by the applicant is accurate, including the details of the applicant and designer, product identification, and representation of the design. This ensures that the application is complete and that the design can be correctly classified under the Locarno Classification System. Proper classification is key for both registration and enforcement. 

C. Preventing Scandalous Content– The formalities check ensures that the application does not contain any offensive or scandalous content. This step helps maintain the integrity of the intellectual property registration system and ensures that applications comply with moral and legal standards. 

D. Design Representation Accuracy– The representation of the design is essential for assessing the design’s novelty and distinctiveness. The formalities assessment ensures that at least one accurate and clear representation of the design is provided, with attention to features described in the statement of newness and distinctiveness (SoND). This helps ensure that the design is properly understood and can be assessed for its eligibility. 

E. Application Efficiency– By identifying any issues or inconsistencies at this stage, the formalities assessment allows applicants to correct errors early in the process. This can prevent delays or rejections later in the substantive examination phase, making the overall process more efficient. 

F. Compliance with International Treaties– For applications claiming priority based on an earlier international application, the formalities assessment ensures that the application aligns with treaties like the Paris Convention. This includes verifying that the details of the prior application, such as country and filing date, are correct. This step helps maintain the integrity of cross-border IP protection. 

G. Protection Against Future Disputes– Ensuring the accuracy and completeness of the design application during the formalities assessment can help protect the applicant from future legal challenges or disputes regarding the design’s validity. By addressing potential issues early on, the applicant strengthens their position in potential enforcement actions.

A formalities assessment follows to ensure the application meets all requirements, leading to registration and the issuance of a certificate. If the design application passes these checks, it is registered and publicly advertised. However, if it fails, the applicant is notified and given two months to address the issues. Failure to resolve these issues will result in the application lapsing, although an extension can be requested. 

1. Request for registration and publication 

A. For Design Applications filed before 10 March 2022

B. Request for Registration or Publication: Applicants must request either registration or publication within 6 months from the priority date. Failure to do so results in the application lapsing for any unrequested designs. 

C. Checking Requests: The request should clearly identify which designs are covered, whether the request is for registration, publication, or a mix of both. Any designs not explicitly excluded will be considered included in the request. 

D. Changes to Requests: Applicants can change a registration request to a publication request before registration but not vice versa. 

E. Subsequent Requests: Normally, a second request for registration is not allowed, except when designs were mistakenly left out. In contrast, further publication requests are allowed, provided the designs haven’t lapsed. 

F. Excluded Designs: Requests for excluded designs can be made outside the 6-month window, provided all designs were requested for registration/publication when the initial application was filed. 

G. Further Designs: If a formalities objection results in a further design being filed and assigned a new design number, it is treated as a registration request. 

2. For Designs application filed on or after 10 March 2022

A. Prescribed 6-Month Period: Applicants have 6 months from the priority date to request registration for all designs. They can either request registration immediately or delay the request until the end of the prescribed period. 

B. Deemed Request for Single Designs: If no request for registration is made within 6 months, the applicant is deemed to have requested registration for single designs. 

C. Deemed Request for Multiple Designs: For applications with multiple designs, if none are deleted or withdrawn, each design is deemed to have been requested for registration at the end of the 6-month period, unless explicitly requested otherwise. 

D. Checking Requests: The request should clearly state which designs are included or excluded. If no exclusions are specified, the request is assumed to cover all designs. 

E. Excluded Designs and Further Designs: Similar to pre-March 10 applications, a request for registration is automatically assumed for designs excluded from an initial application. Any new designs filed due to formalities objections are also taken as a registration request. 

This system ensures that applicants have clarity on how their designs progress and offers flexibility, while setting specific timeframes to avoid unnecessary delays. 

3. Registration of ‘Further Designs’ 

Where an application contains more designs than the applicant has indicated or paid for, it shall be known as ‘Further Designs.’ Such designs must be addressed before an application can proceed to registration. 

If further designs are identified, the applicant will receive formalities notice with details about the visual differences that led to the identification of further designs. The applicant then has several options: 

A. Remove the Further Design(s): The applicant can amend the application under Section 28 to exclude the further design(s) and either file a new application for the excluded design(s) or submit a written request to withdraw the further design(s). 

B. Create a Multiple Application: The applicant can pay additional fees to keep the further designs within the same application, converting it into a multiple design application. This option must meet the requirements of Section 22(1)(c) or (d). 

C. Respond to the Formalities Notice: The applicant can submit a written response arguing against the determination of further designs. If the Registrar agrees with the response, the design will proceed to registration. If not, a further formalities notice will be issued. If the applicant does nothing, the application will lapse. 

By following these procedures, the applicant ensures that the application aligns with the design and fees submitted, allowing it to move forward without unnecessary delays. 

4. Refusal to register by Registrar 

Section 43 of the Designs Act outlines specific prohibitions that lead to the refusal of design registrations. During both the formalities assessment and the examination of a registered design, the design is evaluated against these prohibitions.  

Key grounds for refusal include designs: 

• related to medals,  

• the use of the word “Anzac”, 

• designs that could be mistaken for money, or  

• those that are scandalous,  

• designs using official emblems such as a country’s arms, flag, seal, or symbols of Australian cities, towns, or public institutions are also prohibited. 

During the formalities assessment, if a design falls into one of these categories, the formalities officer will issue a notice refusing the registration under Section 43. The relevant date for determining compliance with Section 43 is the date of registration, not the filing or priority date. Therefore, the Registrar has the authority to refuse the design’s registration at any point before it is officially registered. 

If the design is already registered, Section 43 comes into play again during the examination process, such as when certification is requested. If an examiner finds a violation of Section 43, it becomes grounds for revocation of the registration under Section 65, potentially leading to a hearing. This ensures that designs that should not have been registered, based on these prohibitions, are properly addressed even after the registration is completed. 

5. Renewal of registered Designs 

The initial design registration lasts five years, with an option to renew for another five years. If not renewed, the design enters the public domain after the registration period ends.

1. Who can apply for Certification?

Certification of a design is an optional process that enables the enforceability of a registered design. Typically, the design owner applies for certification, but third parties can also request it. Certification allows the design owner to enforce their rights in infringement cases, preventing others from using the design or any design with a similar overall impression. 

This process ensures that designs can be scrutinized for validity, adding an extra layer of protection for both the design owner and the market. 

 2. Examination by IP Australia

The design must undergo examination by IP Australia to ensure it is new, distinctive, and does not violate any registration refusal grounds. Examination can only occur after the design is registered and can be requested by the owner, a third party, or in rare cases, instigated by the Registrar or ordered by a court. 

After registering a design in Australia, you have the option to request an examination as part of the certification process. This examination can be crucial for strengthening the protection of your design. Here’s a breakdown of the fees involved: 

A. Examination by Registered Owner: If you, as the registered owner, may request the examination. This step is voluntary but important if you wish to enhance the enforceability of your design. 

B. Examination Requested by Third Parties: In some cases, a third party, such as a competitor, may request the examination of your registered design. If this occurs, the examination fee is shared between you and the third party. It’s essential to pay your portion of the fee to maintain your design registration, as failure to do so can result in the cessation of your registration. 

3. Issuance of Certificate of Examination 

A design is not enforceable per se. It means legal action cannot be taken and threats of legal action must not be made, until the design registration has been examined by IP Australia and a certificate of examination has issued. 

Design registrations are not examined until a request for examination is filed.  When examination is requested, IP Australia will perform a substantive examination, assessing (among other things) whether the design is new and distinctive.  If the design registration passes this examination a certificate of examination will issue.  If the examiner believes that the design is not validly registrable an examination report will issue, and if the objections raised are not overcome the design registration will be revoked. 

When to Consider the Examination and Certification Stage in the Design Registration Process in Australia? 

The examination and certification stage are a key part of securing full rights over your registered design in Australia. While optional, there are several important circumstances when this stage becomes essential for protecting and maximizing the commercial value of your design: 

A. Before Enforcing Your Design Rights– Certification is mandatory for enforcing design rights in Australia and without it, even though your design is registered, it cannot be legally enforced in court. If you’re preparing to take action against potential infringers or are entering markets where design theft is common, certifying your design strengthens your legal position. It allows you to issue cease-and-desist orders, seek damages, and protect your market share. This step becomes especially critical when you suspect that others may attempt to copy or use your design without authorization. 

B. When Market Interest Grows– As your design gains popularity or visibility, competitors may take notice. In markets such as fashion, consumer electronics, or furniture, imitation and design theft are prevalent. Certifying your design ensures you have legal grounds to prevent others from copying your design. If your design is a key differentiator in your industry, certification helps prevent competitors from eroding your market advantage by selling similar-looking products. 

C. Licensing and Commercial Agreements– For design owners looking to license their designs or enter commercial agreements, certification is a powerful tool. Licensees and business partners prefer working with certified designs because they provide legal protection and assurance of enforceability. Having a certified design adds value to your negotiations, giving both parties confidence that the design is safeguarded under Australian law. This can also improve the overall value of your intellectual property portfolio when negotiating investment or commercial deals. 

D. Third-Party Challenges and Concerns– While you can initiate the examination and certification process, third parties can also request an examination. Competitors may request an examination to challenge the validity of your registered design. By proactively certifying your design, you can avoid vulnerability to such challenges, ensuring your design is upheld as registrable. It also enables you to defend your design rights more effectively if someone attempts to invalidate them. 

E. Preventing Revocation– If a third party challenges your design through examination and the design is found non-registrable, it may result in the design’s revocation. By initiating the certification process yourself, you have the opportunity to address potential issues before a challenge arises. If any concerns are raised during the examination, you can resolve them to maintain your design rights and prevent the loss of your registration. 

F. Long-Term and Strategic Protection– Certification is a crucial part of any long-term strategy for protecting your design. For businesses with valuable or high-profile designs, certifying their designs early ensures they are shielded from infringement throughout their commercial lifespan. This is especially important for designs with long-term commercial potential, where preventing imitation is vital for maintaining a competitive edge. Certification also adds credibility when pursuing international design protections. 

G. Post-Registration Developments– After your design is registered, circumstances may change, necessitating certification. For example, if your design initially had limited commercial interest but later gains popularity or enters new markets, certification becomes more important. Since certification can be requested at any time post-registration, you can choose to initiate the process when it becomes most strategically advantageous, such as when entering licensing agreements or expanding into new regions.