What is a registered design?
A design refers to the features that establish the unique overall appearance of a product—its shape, configuration, pattern and ornamentation. A registered design provides the owner with the exclusive right to that design in the marketplace in respect of the product category for which it is registered. A design registration lasts for 10 years.
What types of design can be protected?
You can protect just about any type of product as long as the design is both new and distinctive when compared to designs already out in the public domain. The product that the design has been applied to must be specified in your application.
To determine whether a design is new and distinctive, it is compared with the ‘prior art base’, which includes designs published anywhere in the world. A design will pass this test if an identical or substantially similar design in ‘overall impression’ does not exist in the public domain. As with patents, it is important that the design is not publicly disclosed before you apply for design protection. Unlike with patents, there is no grace period and you will not be able to obtain design protection if it is disclosed publicly prior to making a design application.
Each product category varies, and consideration is given to the nature of the product and the scope for design within that category. This is assessed by a review of prior designs worldwide and use of similar designs in Australia.
Design/Copyright Overlap
There is an overlap between registered design protection and copyright protection. If your design is two-dimensional it may qualify for protection under both the Designs Act and the Copyright Act. However, if your design is three-dimensional you may lose the benefit of copyright protection if it has been industrially applied. An exception to this loss of copyright protection is where the copyright work is considered a ‘work of artistic craftsmanship’. It is important to ensure the right strategy is in place so that you can maintain your ability to seek design registration, particularly if copyright protection is likely to be lost due to the design/copyright overlap.
How do I protect a design?
You can register a design to protect the overall appearance of a product, but this does not protect how the product functions. If the functionality of the product is sufficiently novel it may be prudent to seek patent protection as well. Dual design and patent protection applications are not uncommon. Also, dual design and trade mark protection is often sought. Trade marks can also protect the shape of a product, however the criteria for obtaining shape mark protection differs from design protection. See the trade mark registration page for more information. A design application (and a patent application) must be filed prior to the design being publicly disclosed. For this reason it is recommended that you discuss your design requirements with us as early as possible during the development phase.
Why seek design protection?
Your product’s appearance can be as vital a marketing asset as your brand name.
Design registration under the Designs Act 2003 provides you with the right to prevent an unauthorised party from adopting a substantially similar design, thereby protecting your commercial interests. Registered designs are placed on the Designs Register, which is a publicly available database. Anyone can search the register prior to manufacturing a product, so having your design listed will act as an effective deterrent to potential infringers.
How do I register a design in Australia?
The first step is a design registration search to confirm that your design qualifies for registration. An infringement (or clearance) search is also recommended to ensure that your use of the design does not infringe any previously registered rights of another trader. A design application is then made with IP Australia. This involves meeting certain formal requirements. Though not compulsory, we recommend including a Statement of Newness and Distinctiveness with the application. This will help define the innovative aspect of the design and can also have other legal implications regarding the design. IP Australia conducts a formalities examination to ensure all required information has been provided and, if the application is deemed satisfactory, it is registered and published (together with representations of the design, which you must provide) in the Australian Official Journal of Designs and on the Designs Register. A Certificate of Registration is also issued. This part of the registration process generally takes a few months.
However, a registered design does not provide legally enforceable rights against suspected infringements. To obtain enforceable rights, a design must be examined and certified. Upon request, IP Australia will examine the registered design to determine whether it satisfies the requirements of being ‘new and distinctive’. If these (and other) criteria are met, the design will be certified. At this point, legally enforceable rights can be used in infringement proceedings. You can obtain certification at any point of the design’s registration term.
How do I register a design overseas?
Design registration sought with IP Australia is jurisdictional, so it only provides protection within Australia. For information on registering a design overseas, see our international design registration page.
What is a design search?
A design search, like a trade mark search or a patent search, places you in an informed position regarding the availability and eligibility of your proposed design.
The main design searches are:
- design registration search
- prior art search infringement (or clearance) search
- competitor or name-based search.
Actuate IP also offers a ‘design watch’ service, where we devise a strategy to monitor the design filing activities of your competitors as well as watching for design applications that are identical or similar to your design. The design watch service will identify whether any relevant design applications may potentially infringe upon your own design or whether, if granted, you might in fact be infringing upon a design.
Can I conduct a design search myself?
It is possible to conduct your own design search and this is often a good starting point. Conducting your own marketplace research may reveal whether or not your design is truly new and distinctive, which is crucial for registration. However, in order to conduct a detailed design search, it is advisable that you engage the assistance of a suitably qualified design lawyer. Searches require an in-depth understanding of the law and the legislation that applies to designs.
HOW CAN ACTUATE IP ASSIST?
Actuate IP’s qualified attorneys provide an expert and tailored approach to assisting with the implementation of registered design strategies and protection for businesses. We work with a close network of overseas attorneys in all key jurisdictions meaning we can assist you with any international registered design protection in an efficient way with a clear focus on achieving the right outcome.