A business may spend considerable time and money developing a product, only to discover after its commercial launch that the product’s design was never registered. By that stage, the product may already have been advertised online, displayed at trade exhibitions or sold to customers.
Does this mean it is too late to obtain design protection in Australia?
Not necessarily.
Under the Designs Act 2003 (Cth), Australia provides a 12-month grace period which, in certain circumstances, allows a design owner to apply for registration even after the design has been publicly disclosed.
However, the grace period is subject to important limitations. Whether registration remains possible depends on when the design was first disclosed, who disclosed it and whether other relevant designs or third-party activities arose before the application was filed.
Why does public disclosure matter for design registration?
Australian registered design protection concerns the overall visual appearance of a product, including features of shape, configuration, pattern and ornamentation.
To qualify for protection, a design must be new and distinctive when compared with the relevant prior art.
Under sections 15 and 16 of the Designs Act 2003 (Cth), the prior art base includes designs publicly used in Australia and designs published in documents anywhere in the world before the relevant priority date. Certain earlier design applications may also form part of the prior art base.
This means that publishing photographs of a product online, displaying it publicly or selling it before filing a design application can create difficulties.
For example, if a manufacturer launches a new lighting product and publishes detailed photographs of its appearance on its website, those photographs may constitute a public disclosure of the design.
Without an applicable exception, the manufacturer’s own earlier publication could prevent the design from satisfying the statutory requirements of newness and distinctiveness.
The Australian design grace period was introduced to address this problem.
How does the 12-month Australian design grace period work?
Section 17(1) of the Designs Act 2003 (Cth) allows certain publications or uses of a design during the 12 months preceding its priority date to be disregarded when assessing whether the design is new and distinctive.
The provision came into effect on 10 March 2022 and applies to qualifying disclosures occurring on or after that date, in relation to eligible design applications.
In practical terms, a business that publicly discloses its product design before filing may still be able to obtain Australian design registration, provided the application is filed within the applicable 12-month period and the other statutory requirements are satisfied.
Consider a furniture manufacturer that develops a chair with a distinctive configuration. The manufacturer photographs the chair and begins advertising it on its website. It subsequently discovers that no Australian design application was filed.
If the first public disclosure occurred less than 12 months before the proposed filing date, the manufacturer may still be eligible to rely on the grace period.
The earlier website publication would not necessarily prevent registration merely because the design was made available to the public before filing.
The important point is that the grace period does not extend the filing deadline indefinitely. Once the relevant period has expired, the earlier disclosure may become an obstacle to registration.
What types of public disclosure are covered?
The grace period may apply to a range of commercial activities undertaken before filing a design application.
These can include publishing product photographs on a company website or social media, displaying a product at a trade exhibition, circulating marketing material, offering a product for sale or commencing sales of the product.
Section 17 is not limited to disclosures made personally by the designer.
It can also extend to disclosures made by the design owner, a predecessor in title, or another person who obtained or derived the design from a relevant person. Depending on the circumstances, this may include disclosures by employees, distributors, marketing agencies or other commercial partners.
Importantly, even an unauthorised disclosure may qualify.
For example, if an employee publishes photographs of an unreleased product without the manufacturer’s permission, the disclosure may still fall within the grace period, provided the statutory conditions are satisfied.
A distinction should also be drawn between public disclosures and confidential communications. Providing product drawings to a manufacturer or supplier under genuine confidentiality obligations will not necessarily amount to public disclosure.
The circumstances of each disclosure must therefore be examined rather than assuming that every communication about a product starts the 12-month period.
When will the grace period not protect a design?
The 12-month grace period does not overcome every obstacle to registration.
One significant limitation concerns publications made by design registration authorities.
Under section 17(1B), the grace period does not generally allow applicants to disregard publications made by the Australian Registrar of Designs or equivalent foreign or international design registration authorities under the relevant design laws.
For example, where a design has already been published in an overseas design register, that publication may remain relevant prior art against a subsequent Australian application.
This is particularly important for businesses that have filed design applications overseas but delayed seeking corresponding protection in Australia.
Another limitation concerns independently developed third-party designs.
Where another person independently creates and publicly discloses a substantially similar design before the applicant’s priority date, the grace period may not prevent that earlier design from being considered during examination.
An earlier design application with an earlier priority date may also present difficulties, even if its contents become publicly available only later.
The grace period should therefore not be treated as a guarantee that an application filed within 12 months will ultimately result in a valid and enforceable registered design.
What happens if a competitor starts selling a similar product before you file?
This is one of the more significant commercial risks associated with relying on the grace period.
Section 71A of the Designs Act 2003 (Cth) provides an infringement exemption for certain prior uses.
Broadly, where a third party has already undertaken specified commercial activities involving an identical or substantially similar design, or has taken definite steps towards those activities before the registered design’s priority date, that party may be entitled to continue certain activities without infringing the subsequently registered design.
For example, a business publicly launches a product but decides to wait several months before filing a design application.
During that period, a competitor sees the product and begins manufacturing a substantially similar product for commercial sale.
Even if the original business subsequently obtains registration within the 12-month grace period, the competitor may be able to rely on the prior use exemption, depending on the facts.
The exemption has its own statutory conditions and limitations. It does not give every competitor an unrestricted right to copy a design.
Nevertheless, the distinction is important.
The grace period may preserve the ability to obtain design registration, but it does not necessarily preserve the full practical value of the rights that registration would otherwise provide.
For this reason, delaying an application after public disclosure can expose a design owner to commercial risks which may not be resolved by obtaining registration later.
Can you register a design after selling products in Australia?
Yes, potentially.
Selling a product before filing does not automatically prevent Australian design registration where the relevant sale or public use falls within the statutory grace period.
However, the date of the first sale is not necessarily the date from which the grace period begins.
A product may have been disclosed earlier through promotional photographs, online listings, trade exhibitions or demonstrations.
For example, a manufacturer may begin selling a product in June, although photographs showing its design were first published on the company’s website in February.
In that situation, the February publication may be the relevant first public disclosure.
A proper assessment therefore requires a review of the product’s development and commercial release history, rather than relying only on the date when sales commenced.
How do you claim the design grace period?
The grace period may be raised when filing a design application or during the subsequent examination process.
Where reliance on the grace period is necessary, IP Australia may require a declaration identifying the relevant disclosures, including when they occurred and who was responsible for them.
Supporting evidence may also be required.
Relevant material can include dated website records, social media publications, product catalogues, invoices, marketing correspondence, exhibition records and other documents establishing when the design first became publicly available.
Where a disclosure was made by another party, evidence establishing how that party obtained or derived the design may also be important.
This makes contemporaneous records particularly valuable.
A business that cannot establish when its design was first disclosed may encounter difficulties demonstrating that the disclosure falls within the permitted period.
It is also important to understand that Australian design registration and certification are separate stages. Registration itself does not mean that the design has undergone substantive examination for newness and distinctiveness. A registered design must be examined and certified before infringement proceedings can be commenced.
Consequently, the effect of an earlier disclosure may become particularly important during examination, including where a third party requests examination of the registered design.
Does the Australian grace period protect designs overseas?
No. The Australian grace period operates under Australian legislation and does not determine whether a design remains eligible for protection in another country.
Other jurisdictions have different requirements concerning public disclosure, grace periods and filing deadlines.
Some countries provide grace periods, while others have more restrictive rules.
A business that publicly launches a product before filing may therefore retain the ability to register the design in Australia but lose the opportunity to secure protection in certain overseas markets.
Where international protection is contemplated, the filing strategy should be considered before public disclosure.
For businesses that have already filed a design application overseas, the possibility of claiming convention priority in Australia should also be considered. The usual convention priority period for designs is six months from the relevant first application, subject to the applicable requirements.
What should you do if your product has already been launched?
If a product has already been advertised, displayed or sold before a design application was filed, the first step is to establish the disclosure history.
The review should identify the earliest occasion on which the design became publicly available, the nature of that disclosure and the person responsible for it.
It is also necessary to establish ownership of the design, consider any earlier design applications and assess whether relevant third-party designs or commercial activities could affect the proposed registration.
Where the grace period remains available, an application should be prepared and filed without unnecessary delay.
Particular attention should be given to the design representations submitted with the application. These drawings or photographs are central to identifying the visual features for which protection is sought.
A late filing opportunity should not result in an application being lodged with inadequate or inconsistent representations merely to secure a filing date.
Can a design still be protected after the 12-month period expires?
Where a design has been publicly disclosed more than 12 months before its relevant priority date, the general grace period will ordinarily no longer be available for that disclosure.
That does not necessarily resolve every possible case. The nature of the earlier disclosure, whether it was genuinely public, the identity of the disclosing party and any other applicable statutory exceptions may still require consideration.
However, where the design was clearly published or publicly used outside the applicable grace period, obtaining a valid Australian design registration for that same design may be difficult.
The position should be assessed before incurring the cost of filing an application that may be vulnerable to revocation during examination.
Protecting a product design after commercial release
The introduction of the 12-month grace period has provided an important opportunity for Australian businesses that disclose their products before obtaining design protection.
It can assist manufacturers, product developers and other businesses that have already commenced marketing or selling their products.
However, the grace period is a safeguard against certain earlier disclosures, not a substitute for filing before a product is launched.
Early filing remains the preferable approach, particularly where a product has commercial value, competitors are active in the market or international protection is contemplated.
At LexGeneris, we assist businesses with Australian design applications, including matters involving prior publication, product launches and potential reliance on the statutory grace period.
If your product has already been advertised, displayed or sold, we can review the relevant disclosure history, assess whether registration remains available and advise on the appropriate filing strategy.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand
