Designs Act 2003

The Act affects designers, applicants, registered owners, exclusive licensees, importers, manufacturers, retailers and users of products in trade or business. It also affects directors who can be held liable as joint tortfeasors for company infringement, registered patent attorneys and registered trade marks attorneys, and the Crown in its various capacities. Bodies who derive title from creators (for example, employers under s 13(1)(b) where a designer creates a design in the course of employment or under contract) are explicitly contemplated.

Anyone wishing to assert design rights must file a design application that complies with the minimum filing requirements prescribed by the regulations (s 21). A design application can be filed by more than one person and must specify the entitled persons in relation to the designs disclosed (s 21(3) and (4)). The application can cover more than one design (s 22). After filing, the Registrar conducts a formalities check (ss 39 and 40) and either registers eligible designs or invites the applicant to correct deficiencies (s 41).

After registration, the practical obligation is examination. Infringement proceedings cannot be brought until the design has been examined under Chapter 5 and a certificate of examination has been issued (s 73(3)). Examination occurs on request, on court order or on the Registrar's own initiative (s 63), and considers whether a ground for revocation exists (s 65). The principal ground is that the design is not a registrable design (s 65(2)).

Term of registration is five years from the filing date, extendable to ten years on renewal under s 47 (s 46). Registration ceases if examination is requested and no certificate of examination is issued within the prescribed period (s 48), and may be revoked on surrender (s 50), on grounds relating to entitled persons (ss 51 to 56), after examination (s 68), or by a court under s 93 on grounds including non-registrability, lack of entitlement, fraud or false suggestion, or extinction of copyright in a corresponding artistic work.

The Registrar of Designs is the central administrator (s 122) and is supported by Deputy Registrars (s 123) and an arrangement for delegation (s 124). Section 127 confers the Registrar's powers, including powers to summon witnesses, require production of documents, and administer oaths. Section 135A authorises computerised decision-making, with the Registrar treated as having made any decision generated by a computer program operating under the Registrar's control, and a substitution power if a computer-generated decision is incorrect (s 135A(3)).

The Registrar may prohibit publication of information about the subject matter of a design application "if it appears to the Registrar to be necessary or expedient to do so in the interests of the defence of the Commonwealth" (s 108(1)), subject to ministerial direction. While such an order is in force the design must not be registered (s 108(3)).

The Federal Court has jurisdiction in matters arising under the Act (s 83) and so does the Federal Circuit and Family Court of Australia (Division 2) (s 83A). Other prescribed courts (the Supreme Courts of the States and Territories) have jurisdiction subject to the limits in s 84. Appeals from the Registrar lie to the Federal Court or the Federal Circuit and Family Court (s 87), with appeal from those courts to the Full Court of the Federal Court only with leave when sitting on a Registrar appeal, and to the High Court only by special leave.

Compulsory licences may be ordered by a prescribed court under s 90 if products embodying the design have not been made in Australia to a reasonable extent and the registered owner has given no satisfactory reason for failing to exercise the rights, and the applicant has tried unsuccessfully to obtain authorisation. Section 92 allows revocation after a compulsory licence has been granted if the reasonable requirements of the public are still not satisfied.

Chapter 11 Part 3 contains the criminal offences. Section 131 makes it an offence, with a penalty of imprisonment for 12 months, to make a false entry in the Register knowing or being reckless as to its falsity, or to tender in evidence a document that falsely purports to be a copy of an entry. Section 132 imposes 60 penalty units for falsely representing that a design is registered, falsely claiming registered ownership, or selling a product marked "registered in Australia" or similar when the design is not registered. Section 133 imposes 30 penalty units for representations that misleadingly imply a connection with the Designs Office. Section 134 (30 penalty units) addresses failure to comply with Registrar requirements, subject to defences for lawful excuse and self-incrimination. Section 135 (60 penalty units) bars Registrar staff from trafficking in designs and voids any contravening transaction. Section 109 imposes imprisonment for 2 years for breach of a defence prohibition order made under s 108.

Civil enforcement runs through Chapter 6. Infringement is defined in s 71, mirroring the registered owner's exclusive rights in s 10. Remedies under s 75 include injunction and, at the plaintiff's option, damages or account of profits, plus additional damages for flagrant infringement under s 75(3). The court has power to refuse or reduce damages if the defendant proves lack of awareness of registration and reasonable steps to ascertain status (s 75(2)). Section 80 makes mere notification of registration not a threat for the purposes of unjustified threats, while ss 77 to 79 give an aggrieved party relief from unjustified threats including damages with an additional flagrancy uplift (s 77(1A)). Section 81 protects legal practitioners and registered attorneys acting in a professional capacity.

Filing date is set by s 26 once minimum filing requirements are met. Priority date is the filing date or, where applicable, an earlier date claimed under the Convention regime (s 27 and s 5A). Section 28 deals with amendment and s 32 with withdrawal. Lapsing rules sit in s 33.

Term is five years initially under s 46 and renewal under s 47 takes the term to ten years from the filing date. Infringement proceedings must be started within six years from the day on which the alleged infringement occurred (s 71(4)). Section 17 disregards publications and uses by relevant entities, or by persons who derived a design from a relevant entity, that occurred in the 12 months before the priority date (the grace period). Subsection 17(1A) ties the operation of that grace period to the commencement of Schedule 1 to the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021.

Extensions of time are available under s 137, with consequences for third-party protection in ss 138 and 139. Section 136A enables an act to be done when the Designs Office reopens after a closure period.

The Act explicitly cross-references the Copyright Act 1968 (definitions of "artistic work" and "corresponding design" in s 5; the design or artistic work overlap in s 18), the Patents Act 1990 (registered patent attorney definition), the Trade Marks Act 1995 (registered trade marks attorney definition), the Public Service Act 1999 (Agency and employee definitions), the Personal Property Securities Act 2009 (PPSA security interest definition; s 12 and s 14 carve-outs), the Acts Interpretation Act 1901 (incorporation of materials, statement of reasons rule via s 96 note), the Seas and Submerged Lands Act 1973 (continental shelf), the Norfolk Island Act 1979 (s 84 limit on Norfolk Island Supreme Court jurisdiction), the Federal Court of Australia Act 1976 and the Federal Circuit and Family Court of Australia Act 2021 (cross-court transfers, s 86), the Administrative Review Tribunal Act 2024 (s 136 review), the Criminal Code (evidential burden notes throughout the offence provisions), and the Legislation Act 2003 (s 5A(2) on regulations applying or adopting external materials).

Three issues catch out litigants and their advisers. First, you cannot sue on a registered design unless and until it has been examined and a certificate of examination has been issued (s 73(3)); registration alone is not enough. Second, threats made before examination are statutorily unjustified (s 77(3)), so cease-and-desist correspondence sent on a registered-but-unexamined design exposes the sender to s 77 relief and potential additional damages under s 77(1A). Third, the prior-use defence in s 71A only applies in relation to designs whose priority date is on or after the section's commencement (s 71A(1)), and is lost if the comparable design was derived from the registered owner or a predecessor in title (s 71A(3)).

A subtler trap: under s 17(1)(b), publications by other persons who derived the design from a relevant entity are also disregarded for the grace period, but this paragraph does not extend to publications by foreign designs offices, by international agencies established under international agreements, or by the Australian Registrar (s 17(1B)).

A furniture company files a design application for a chair. Filing date is set when minimum filing requirements are met (s 26). Five years later, after a competitor's substantially similar chair is spotted in the market, the company requests examination (s 63), receives a certificate of examination (s 67) and only then files infringement proceedings under s 73, within six years of the alleged infringement (s 71(4)).

A car-parts supplier copies the shape of an externally visible plastic moulding for a registered vehicle design. The defence may rely on s 72: the moulding is a component part of a complex product (s 6(2)), and the use is for the purpose of repair to restore the overall appearance of the complex product. The plaintiff bears the burden of proving the supplier knew or ought reasonably to have known the use was not for that purpose (s 72(2)).

A government health agency wishes to use a design embodied in personal protective equipment in an emergency. The relevant Minister can authorise Crown use under s 96A on emergency terms; ordinary Crown use under s 96 requires prior negotiation, ministerial approval and at least 14 days' notice with reasons.