Tuesday 8 March 2016
Protecting industrial designs in Australia and New Zealand – a comparison
Registered designs can be a valuable and cost-effective component of an IP portfolio, but they are often underutilised.
Despite close economic ties between the two countries, the systems for protecting industrial designs in Australia and New Zealand are quite different. Being aware of these differences may help you avoid inadvertent loss of protection for your design.
Criteria for registered design protection
Australia requires a slightly higher level of originality for a valid design registration than New Zealand. In Australia designs need to be ‘new and distinctive’ over existing designs, whereas in New Zealand they must simply be ‘new or original’. ‘Distinctive’ means ‘not substantially similar in overall impression’. Therefore, some designs registrable in New Zealand may not be enforceable registrations in Australia.
Designs protect the look of a product, but most products also serve a function. In Australia, there is no restriction against design registrations for products that are purely functional. However, in New Zealand, a registered design cannot be purely functional. If the shape of your product is determined only its function, you may only be able to obtain valid protection in Australia.
For both countries, designs should be kept confidential until after a design registration has been filed. In general, neither Australia nor New Zealand provides a grace period for filing a design after a public disclosure. However, each country has specific exceptions.
New Zealand offers a very limited six month grace period for disclosure at specified gazetted exhibitions. In Australia there is some protection against previous use of an artistic work so long as the work has not been ‘industrially applied’, but the law relating to this exception is complex. We do not recommend relying on the limited grace provisions in either country.
Duration of protection
A registered design in Australia has a maximum term of 10 years. New Zealand offers a longer maximum term of 15 years from filing.
Application and examination process
Design applications in Australia are automatically registered without examination other than a formalities check. However, before enforcing a registered design, it must be examined and certified.
In contrast, New Zealand design applications are automatically examined for newness and formalities before they are registered.
Automatic copyright protection for designs
Independent of registered designs, New Zealand offers 16 years of automatic copyright protection against third party copying for industrial designs. In some special cases the term can be 25 years. We don’t recommend relying solely on this automatic protection as it can be narrower, more difficult, and more expensive to enforce than a registered design. However, it provides a useful recourse for action in the absence of a registered design.
Australia generally does not offer automatic copyright protection for mass-produced three-dimensional (3D) products, except in special circumstances. Therefore, registered designs are particularly important in Australia as failure to register a design for your product in Australia may lead to the total loss of protection for the design in Australia.
The table below summarises important differences between the two regimes.
|Maximum term of registered design||10 years||15 years|
|Level of originality required||New and distinctive||New or original|
|Restriction for functional products||No restriction||Design cannot be purely functional|
|Grace period||No, but previous use of an artistic work that has not been industrially applied may be acceptable in some situations||No, only a limited grace period for disclosures at specific events|
Registered designs must undergo examination and be certified before they can be enforced
|Substantive examination before registration|
|Automatic copyright protection for industrially applied 3D designs||
No (except in special cases)
|Yes, 16 years (or 25 in special cases)|
If you design products that have an aesthetic appeal, we recommend you consider design registration as an avenue for protecting your creation. Designs are commonly filed for furniture, household fixtures and fittings, vehicles, clothing, electronic devices, packaging, plus a whole range of other consumer products. Design protection is also available for two dimensional designs, such as wallpaper and fabric prints.
Please contact us if you wish to know more about how you can use registered designs to protect the appearance of your products.