Design Infringement & Enforcement
We have considerable experience in design and enforcement matters having acted for design owners in a variety of industries in design enforcement and revocation litigation and can provide you with sound legal and technical advice on design enforcement matters.
Enforcing a registered design
If someone copies, imports, sells or uses a registered design for the purpose of trade in Australia, then an infringement has occurred. Even keeping the design with the intention of trading it amounts to infringement.
A registered design cannot be enforced until it has been certified. In order to certify the design, IP Australia must examine it and determine that it is new and distinctive. The Designs Act allows a party threatened with infringement to seek injunctive relief and damages if the threat relates to a registered but not yet certified design.
Unlike some other jurisdictions, Australia does not have an unregistered design right. However, even if a design is not registered, action might still be taken to protect the goodwill and reputation a trader has acquired by the distinctive shape and configuration of a product. This right comes under the tort of passing off or under the Australian Consumer Law.
Actions for design infringement usually commence in the Federal Court of Australia. Our litigation team has considerable experience prosecuting and defending claims of design infringement. We can devise litigation strategies based on our sound technical knowledge and practice in designs law to help you achieve your commercial objective. Our litigation team also has considerable experience in alternative dispute resolution practices, and can represent design owners in mediations and arbitrations. These alternatives can resolve infringement disputes more quickly and cost effectively.
Design re-examination and revocation proceedings
Actions for design infringement are often met with counter-claims seeking to revoke the registered design alleged to have been infringed. Typically the claim is made on the grounds the design is not new and distinctive, in light of registered and unregistered designs that were publicly available before the filing date of the registered design.
A design may also be revoked if IP Australia re-examines the design and finds that the design is not new and distinctive in light of the prior art. Anyone can ask IP Australia to re-examine a registered and certified design. A party requesting re-examination will usually only do so if it has details of prior designs relevant to the newness and distinctiveness of the design.
We can assist with making requests for re-examination and responding to adverse reports issued by IP Australia as a result of re-examination.
Validity and infringement opinions
Any design enforcement strategy should be firmly based on advice about whether the design of a product infringes a registered design and whether the registered design is valid. We provide validity opinions, including designs searches to assess whether designs are new and distinctive, and infringement opinions to ensure that clients can