REGISTERING A DESIGN

WHAT MAY BE REGISTERED?

The Designs Act 1906 defines a design as meaning "features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye".

An overriding requirement for registration is that the design must be new or original. The following designs CANNOT be registered.

1) A design which is common in the trade. Even if it differs slightly from such a design, it cannot be registered.

2) A design which has been used or published in Australia prior to lodgement of the application.

3) A design which has been previously registered as a design under the Act.

4) Designs for articles that are primarily literary or artistic in character.

5) Articles on which there is printing being bookjackets, calendars, certificates, forms or other documents, dressmaking patterns, greeting cards, labels, leaflets, maps, plans, postcards, stamps. Also, medals.

Also, transfers that are for the purpose of being transferred to the surface of another article. However, such designs may be registered in respect of other articles. For example, a T-shirt to which a transfer has been applied may be registered. It should be noted that, in this case, the registration is effected in respect to the T-shirt and not in respect to the transfer.

6) A method or principle of construction.

7) Buildings constructed in situ. A portable construction  design may, however, be registered.

If a design has been determined solely on the basis that it was necessary for the article to be constructed in that way, registration is not permitted. On the other hand, if the shape of the article is one of several that could have been adopted for an article, then registration is permitted. For example, the general shape of a spade is determined by its function. However, a new shape or configuration of a spade, although dictated by function, may be registered.

A design can be registered only in respect of an article or a set of articles. However, a separate application can be made to have the design registered in respect of another article.

Registration gives the registered owner a monopoly in that design with respect to the registered article. He can, by law, prevent others from using his design.

The initial registration is for a period of 12 months from the date of registration. The registration can subsequently be extended for three periods of five years, making a total registration period of 16 years.

The registration may be opposed by any interested person. During the first 11 months of registration, any person may lodge evidence with the Designs Office showing that the design is not new and original. If this happens, the Registrar advises the applicant of such opposition. The applicant can reply to the objections. The Registrar will then determine whether the design can continue to be registered.

Only the owner of a design can apply for registration. The author of the design is generally the owner. However, it is possible for an owner to sell his rights by assigning his rights to another. In that case, it is the new owner who can apply for registration. Also, it is possible that the person who does the original designing never becomes the owner. This would happen if he were paid to do the work e.g. an employee who designs something for his employer or a commercial artist who is paid to do a design. Once a design has been registered, the new registered owner can also sell his rights in the registered design.

The Designs Office forms part of the Patents Office , now known as IP Australia, in Canberra. There is a State branch in each State capital city. Application forms for applying for a design can be obtained from any of these.

Applications for designs are very often made by patent attorneys on behalf of applicants.

APPLICATION PROCEDURE

Applicants should first of all conduct a search of the Designs Office register to ascertain whether their design or a similar design has previously been registered. The search can be conducted at the Designs Office in Canberra, at any of the State branches or on the internet..

The procedure for applying for a design is as follows.

Obtain and complete Form 1 and Form 2. Form 1 must contain the applicant's full name and address. The name of the article must be stated. An ordinary everyday description of the article suffices e.g. "a table". Technical or verbose descriptions or circumlocution are not encouraged by the Designs Office. A Statement of Monopoly is usually provided but is not essential. This states those features of the design for which registration is claimed. A typical claim, for example, for a table, would read "Monopoly is claimed in the features of shape or configuration of a table as illustrated in the accompanying representations."

Additionally, the Registrar may require a Statement of Novelty. This is required when doubt exists as to the newness of the design. The applicant must state those features which he considers to be new.

Form 1 also requires the applicant to state that he is the owner of the design. If he is not the actual author of the design, he must state how he acquired ownership of the design.

Australia is a party to a treaty with certain other countries regarding Designs. The treaty provides that priority of registration dates from registration in the first treaty State. Accordingly, if an Australian applicant has previously registered his design overseas in a treaty country, he can apply to have registration operate from that date in Australia. A maximum of six months backdating only is allowed. Form 1 allows the applicant to make such a claim.

The form must be signed and dated.

In addition, the applicant must provide seven copies of Form 2 with a representation of the design attached to each. He must also provide a further seven unaffixed copies of the design, making 14 copies in all. A representation means a drawing, tracing or specimen of the article to which the design is applied or a photograph of the article to which the design is applied. Representations must be clear and precise showing the article as the eye would see it. Representations must be of good quality. Drawings must be accurately drawn and not rough-hand sketches. Views should include at least one perspective view. Photographs must be clear originals. Photocopies of photographs will not be accepted.

An application fee of $90 must be included.

The Design Office will search the register for conflicting designs. The application will then go before an Examiner who will report on the application. He will send a copy of the Report to the applicant. At this stage, the application may be accepted as it stands or it may be rejected outright. Alternatively, the Report may require the applicant to do any of the following if he wants the design to be registered.

a) Insert or alter a Statement of Monopoly.

b) Substitute one representation for another.

c) Exclude a design from the application.

d) Alter a representation.

e) Add a Statement of Novelty.

f) Alter the application form on file.

g) Substitute a new application form.

If there is no impediment to registration, the applicant can look forward to having his design registered within one year of applying. If there are objections to be overcome, registration will take correspondingly longer.

Once the design is registered, the Registrar will a) issue a certificate of registration to the applicant and b) advertise details in the Official Journal of Patents, Trade Marks and Designs. Within 11 months of advertising, interested parties can oppose the registration by applying to the Registrar. Even after this period of 11 months, persons can oppose the registration by applying to the Courts.

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Copyright 2000.



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