Over 220,000 industrial designs from IP Australia now part of EUIPO platform

08 October 2021

IP Australia has joined DESIGNview, enabling more than 220,000 industrial designs from the intellectual property office to be part of the online tool’s database of millions of designs from around the world.

An initiative of the European Union Intellectual Property Office (EUIPO), DESIGNview is a multilingual and user-friendly platform providing access to design applications and registrations from 73 participating IP offices.

Through DESIGNview, users may search these designs for free, receive updates on selected designs, check design details, check market tendencies and others. The online tool also helps offices undertake examination and examiners check earlier priority rights.

“It will enable businesses and designers in Australia to more easily determine if their ‘new design’ is new and therefore capable of securing protection in Australia and throughout the world,” said Mark Metzeling, special counsel at Macpherson Kelley in Brisbane.

“Up until IP Australia joined DESIGNview, Australian designs were only available for searching via IP Australia's design database,” said Joanna Lawrence, counsel at Ashurst in Melbourne.

“This has the potential to benefit Australian designers and design owners by giving their designs and design activity greater prominence globally. Greater access to Australian designs may also help deter overseas businesses from adopting similar designs to the Australian designs they come across on DESIGNview. It also benefits Australian designers by enabling IP offices in other countries to more easily find Australian designs as part of their prior art searches which will help to ensure that overseas protection is not granted to a design which is a copy of, or similar to, a prior Australian design,” Lawrence explained.

With over 220,000 industrial designs from IP Australia now part of DESIGNview, the platform now provides access to more than 18 million designs from around the world.

According to the two lawyers, design protection is underutilized in Australia. To begin with, it is not as well known as trademark, patent and other IP protection systems.

“While the number of design applications is on the rise, the awareness of IP design protection is low,” said Metzeling. “We encourage design protection as it is a very useful protection strategy that if done correctly can lead to an indefinite protection period through its ability to lead to a shape trademark registration, without the prohibition that is associated with a granted patent.”

However, recent developments in Australia show that design protection is now in a better position with the the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 achieving Royal Assent on September 10, 2021. The Act addresses the limited scope of protection for designs, limited flexibility and clarity embodied in the Designs Act 2003.

Among the changes that will benefit designers are: introduction of a 12-month grace period and a prior use infringement defense as well as the extension of the “innocent infringer” defense. Other changes relate to the rectification of the true owner of the design, enforcement by exclusive licensees, streamlining of the initial steps for registering a design by allowing applicants to delay publication of their design for six months from the priority date, automatic assessment of the design and others.

“We have always been a great fan of registering designs but feel they are an underutilized protection,” Metzeling writes in “good grace… by design” published in Macpherson Kelley’s website. “These changes are a real positive step for our clients.”

Some of these changes took effect on September 10, 2021 while others will enter into force on March 10, 2022.