Understanding how a registered design is examined, when infringement may arise, and how design rights can be enforced is essential for protecting the commercial value of your product. Whether you are looking to strengthen your position before entering the market, respond to a competitor’s actions, or take steps to defend your rights, clear advice at each stage can make a significant difference. This article provides an overview of the design protection lifecycle – from examination through to strategic enforcement.
Why do designs go through examination?
If you want to take legal action against someone who infringes your registered design, you must request to have it examined and then certified by IP Australia. If the examination is successful, you will receive a Certificate of Examination and you will have the legal right to take action against the alleged infringer. You can only take action after your design is certified.
An experienced designs attorney can assist with all aspects of this process, including requesting examination and dealing with all correspondence from IP Australia. If IP Australia have any concerns with your design, an attorney can address issues on your behalf and work towards to the most cost-effective and efficient solution.
What happens if someone infringes a design?
Having a Certificate of Examination for your registered design will often act as a deterrent to potential infringers, however it is not a guarantee of protection.
Design infringement occurs when a party makes, uses, imports or sells the product with the same or a similar design without permission of the registered design owner within the country covered by the registered design.
Infringement can occur even where the product was developed independently and there was no prior knowledge of the registered design. Design infringement can potentially be quite damaging for the product owner, particularly if the product is commercially valuable.
Typically, infringement proceedings will begin when a third party requests examination of a registered design. This action would most likely be taken if a competitor considered there were reasons a registered design would not survive an examination.
How is a design enforced?
If you suspect that someone may be infringing your design registration, or someone alleges you have infringed their design rights, engaging an intellectual property lawyers is essential to help defend and enforce your rights.
Design infringement action will usually commence in the Federal Court of Australia. However, not all design litigation will result in court action, and this may not be financially viable or the best course of action.
Before commencing any enforcement proceedings, it is important to establish whether a competitor’s product is likely to be considered by a Court to infringe the registered design, and whether the design registration is valid. This can be done through specialised search and investigations experts who will conduct validity investigations, including ‘prior art’ searches that may impact the validity of the registration. Thorough searches will help you make an informed decision before initiating enforcement proceedings.
There are many different courses of action depending on your situation and an experienced attorney can help you choose an appropriate and cost-effective path forward – which may include alternative dispute resolution practices such as mediation and arbitration
Conclusion
From securing certification to assessing infringement risks and pursuing the most effective enforcement strategy, each stage of the design protection process calls for careful legal and commercial judgment. Our attorneys are highly experienced in all aspects of design protection and enforcement, supported by an in-house research and investigations team that delivers comprehensive searches and reports to help you make well-informed decisions. If you have concerns about protecting your design, our team can provide strategic, practical assistance.
