Currently, registration of a design occurs following a formalities check and substantive examination occurs only on request. If the design is found to have met the substantive requirements of the Act it will be certified and only then is it enforceable.
However, a person unfamiliar with the system may assume that a registered design will provide an enforceable right. This may lead to disappointment or frustration with the Australian designs system, particularly if third parties believe a registered design to be enforceable when it is not.
In its 2015 'Review of the Designs System' in Australia, the former Advisory Council on Intellectual Property (ACIP) recommended that the terminology for a registered but uncertified design be changed to make it clear that the design is not enforceable until certified. The government accepted the recommendation in May 2016.
Public consultation undertaken by the DRP suggests it is unlikely that new terminology would solve the core problem of uncertainty and confusion. As part of IP Australia’s designs reform, this issue is being reconsidered from a broader perspective taking into account the two-step examination process itself and what potential avenues might lead to greater certainty in Australia’s designs system.
Policy development 04-Sept-2017
Consultation 31-Oct-2019 to 20-Dec-2019
Policy Development 20-Dec-2019 to 12-May-2020
On hold 12-May-2020
Status and priority reviewed August-2020
IP Australia conducted a public consultation from 31 October to 20 December 2019 on policy issues being considered for inclusion in the Designs Bill in 2020, subject to government priorities.
IP Australia has published the submissions received during consultation along with our response to those submissions on our Consultation Hub.
Following our consultation, this issue will not be progressed at this stage. Our reasoning can be found in our response to the consultation.
If you wish to provide us with further feedback on this issue, we invite you to use the form below.
Further initiatives are being considered under the Designs Reform Project which is founded on a holistic review of the design ecosystem and its impact on the Australian economy. We will continue to engage with stakeholders on this work.
This issue is being considered further as part of IP Australia’s program of designs reform.
Reviewed February 2021 IP Policy Committee meeting. Title and content updated.