BALDWINS • FoodLegal

Australian Lawyers and Consultants

Designs Act Dangers

November-December 2004

New Australian intellectual property laws may restrict some importers from bringing in look-alikes.

International brands protect more than their names, and generally protect their product designs and packaging designs too, either as designs or as trademarks. An Australian priority can be claimed under international treaties to which Australia is a signatory so that the registration priority date in the home country can be piggy-backed to Australia during the first 6 months from the home country application.

Australian trademark laws already give protection to those who want their distinctive packaging shapes or designs registered as a trademark. Alternatively, registration under the Designs Act 2003, which commenced 17/06/2004, requires a higher threshold for newness and distinctiveness. However, a broad definition of “design” means simply the overall appearance of a product resulting from one or more visual features.

The new Designs Act 2003 streamlines a separate procedure for registration of the design before the procedure for examination (for newness and distinctiveness). If legal action is to be taken against infringement, a certificate of examination will afford the protection from any infringement.

The Australian Designs Registrar or the Federal Court of Australia can refuse to find sufficient newness and distinctiveness if evidence exists of the design having been published anywhere in the world before the Australian priority date of the design. This is known as the prior art base. Under the old Act, the prior art base was limited to designs used or published in Australia.

If one wants to mimic a unique-looking design, consider the need for early legal advice to check the scope of any existing design or trademark registrations. This can entail local and international searches of designs and trademarks, finding points of differentiation or the need to negotiate a licensing arrangement.

For further information, contact Joe Lederman or Sam Recht at BALDWINS, Australian Lawyers & Consultants.

Return to the Baldwins Homepage or Intellectual Property Law Library.