Design protection is gaining greater attention worldwide, but particularly in Australia after back to back years of domestic and international action focused on improving design protection laws.
Currently, the Australian design system does not offer protection for non-physical, virtual or partial designs. There are growing calls for Australia to join the ranks of other jurisdictions such as the European Union, United Kingdom, China, Mexico, Japan and South Korea which recognise partial and virtual design protection. Unlike these jurisdictions, Australia is not one of the 82 members of the Hague System for the International Registration of Industrial Designs which allows party applicants to file for industrial design protection in up to 94 countries through a single international design application.
The request for better design protection was evident in the stakeholder responses recently published from IP Australia’s 2023 Enhancing Australian Design Protection Consultation. The consultation sought stakeholder views on proposals to expand protection of designs to include virtual, partial and incremental designs. The proposed reform would affect the Designs Act 2003 (Cth) and the Designs (Formal Requirements for Designs Documents) Instrument 2022 (Cth). There was strong support from stakeholders in regards to the protection of virtual and partial designs, and post-registration linking of designs. These outcomes have been reported to the Australian Government which is considering legislation to implement the proposals.
Australia’s current design protection laws
The Australian Designs Office currently does not consider virtual designs to be eligible for design protection. This is largely in part due to the Designs Examiners’ Manual of Practice and Procedure which states that logos, type-fonts and software such as graphical user interfaces are not considered to be products under Australian law and therefore cannot be registered on their own.
Currently, design rights in Australia protect the overall appearance of a product resulting from one or more visual features. Transient features on a product (such as a mobile phone display screen when switched on) are not treated as visual features of a product. The overall visual requirement also means that partial designs or the ability to register protection over one part of a product rather than the whole is not possible.
What changes would these reforms bring to design protection?
A virtual design is a product without a physical form, such as a graphical interface or an icon. IP Australia has proposed an expansion of the concept of a ‘design’ to include transient visual features of products in use such as designs on a computer screen that are only visible when the computer is turned on. Proposed virtual design protection would cover designs such as icons, virtual reality and augmented reality.
Partial design protection involves protecting parts of a whole product made in one piece. For example, the same handle used for a range of cups, mugs and jugs could be protected under one design protection specifically for the handle rather than multiple for each different drinking vessel. This would bring Australia into line with other countries which already offer partial design protection, the most recent being Brazil in 2024 and China in 2023.
Incremental design protection refers to protection for developing designs by allowing designers to protect their designs in increments as they develop. IP Australia proposed two different types of reform:
- Preliminary design protection: submitting a low-cost application for a preliminary design before filing a main application with incremental changes from the preliminary design.
- Post-registration linking: the ability of an owner of a registered main design to link it to a subsequent design which has incremental changes to the main design.
IP Australia is not currently proceeding with a preliminary design protection proposal due to mixed levels of stakeholder support. However, stakeholders did support post-registration linking which ensures that publishing or using the main design does not make the subsequent design unprotectable.
Other design law updates
The design world also saw the Riyadh Design Law Treaty (Treaty) adopted by the World Intellectual Property Organisation (WIPO) on 22 November 2024, marking the end of 20 years of negotiation. The Treaty aims to harmonise administrative processes for design protections across jurisdictions, without altering substantive design rights.
The Treaty will make it significantly easier for designers, especially smaller scale designers and micro, small and medium-sized enterprises, to register their work through making the application framework for design protection more uniform. This will be done through actions such as:
- setting a maximum list of elements designers must submit with an application;
- allowing applications to include several designs in a single application;
- providing a 12-month grace period following a first disclosure of the design, during which such disclosure will not affect its validity for registration;
- allowing applicants to keep their designs unpublished for at least six months after having secured a filing date;
- providing relief measures to applicants who miss a deadline to prevent them from losing their rights;
- simplifying the procedure for requesting the renewal of a design registration; and
- furthering the introduction of e-filing systems for designs and the electronic exchange of priority documents.
The Treaty also expressly addresses the protection of traditional knowledge and traditional cultural expressions. The Treaty includes a provision under which contracting parties may require applicants to file information on traditional cultural expressions and traditional knowledge relevant to the eligibility for registration of the design.
Australia is a member state of WIPO but has not yet made any move to become one the 15 contracting parties the Treaty requires to enter into force.
Interested parties should look out for further consultation opportunities if the Australian design protection legislation proceeds or if Australia moves to ratify the Riyadh Treaty. HWL Ebsworth’s Intellectual Property team has extensive experience assisting with design protection advice and registration. If you have any design issues that you would like to discuss further, please do not hesitate to contact us.
This article was written by Luke Dale, Partner and Bellarose Watts, Law Clerk.
