For a design to be protected in Australia, it needs to be registered under the Designs Act 2003 (Cth). Registering your innovative new design in Australia is one thing and more on that can be read here. Once you’ve done that and you’re ready to expand overseas, you’ll want to be protected there too. The international scene is different when it comes to design registrations. So how do you register a design overseas?
Similar to patents, there are two ways to do so. They both depend on how much you’re willing to spend on legal fees. Let’s have a look at how these can be done.
File a Design in Each Foreign Country You Want Protection In
If your design is precious to you, you’ll want it protected in the best way possible. Filing your design individually in each country is arguably the best way to do this. Applying individually in each country will likely be more effective in making sure you’re successful with each application. However, it’s a slow and expensive process.
For example, let’s say you want to register your new and innovative design in the United States and in South America since this is where you plan to sell your products. Their laws are all slightly different in many respects. For example, the United States is a country that recognises the common law and most South American countries recognise civil law. Further, each country has different laws than those in Australia. So, to make sure you’re successful in each country you apply in, you’ll want to speak to an intellectual property lawyer.
They’ll be able to make sure you reach the best result in your applications to each country. However, this involves your retained lawyers contacting law firms in every country you want to submit designs applications in. Documents might also need to be translated if the official language of the country of submission isn’t English. It might take some time to adequately understand the laws in each country and this is why it can be expensive.
Thanks to international treaties and relations, however, this is not the only way to register your design overseas.
Paris Convention: File in Multiple Countries At Once
The International Convention for the Protection of Industrial Property (Paris Convention) applies to industrial property, industrial designs, and utility models. Under the Paris Convention, you can apply in each foreign country along with your Australian application. This is possible because Australia is part of this convention along with about 150 other countries. A convention application will mean that your design, if successful, will be recognised in the countries you apply for. This will need to be done within six months of your Australian application.
There are some advantages to lodging a convention application over filing in each country separately:
- The date you filed your Australian application is the priority date (the date your application is effective from) of your international protection.
- Any public disclosure of your Australian application during those six months will not affect the newness of your foreign applications.
- It’s much cheaper and likely quicker.
Through this method, each country will determine the validity of your patent application based on their laws. This just means that if your design is infringed in another country, the laws of that country will apply, not the laws of the country it was filed in. Applying through the convention is the most efficient way of protecting your intellectual property overseas.
Register a Design Overseas: Takeaways
There are two ways to protect your innovative designs overseas. Individually, through each country. Which can be lengthy and expensive. Or through the Paris Convention. Each has its benefits. If you want to file a design application overseas and aren’t sure where to start, speak to an intellectual property lawyer that can help you best protect your designs.
