Designs examination, infringement and enforcement

Examination

If you want to take legal action against anyone else who infringes your registered design, you must request to have it 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.

We routinely work with clients who wish to have their registered design examined, and we 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, we are also able to deal with these issues on your behalf and work towards to the most cost-effective and efficient solution.

Infringement

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.

We have extensive experience in responding to or initiating these types of proceedings, and can help you establish the most effective strategy to resolve any infringement issues.

Enforcement

If you suspect that someone may be infringing your design registration, or someone alleges you have infringed their design rights, our intellectual property lawyers are able 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. Our in-house search and investigations company, IP Organisers, conducts validity investigations that take an existing design registration and look for prior art that may impact the validity of the registration. This will help you make an informed decision before initiating enforcement proceedings.

We will work closely with you to establish the most appropriate and cost-effective course of action, including alternative dispute resolution practices such as mediation and arbitration. Our lawyers have considerable experience in prosecuting and defending claims of design infringement, so you can rest assured your design is in good hands.