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What is a Registered Design?

What is a Registered Design?

Posted 29 April 2022 by Jennifer Driver

Categories: Registered Designs

A registered design is a form of intellectual property that protects the visual appearance of a product. Unlike a patent, which protects the functionality of a product, a registered design is specific to the look of a product. This may be a combination of the product’s shape, colour, configuration, pattern or ornamentation. If the look of your product is important to its marketability, a registered design should be considered. This article sets out the purpose and benefits of design registration as well as the requirements for obtaining a valid design registration.

Benefits of a registered design

An Australian design registration provides its owner with the exclusive rights to use the product in Australia. This includes the right to make, import, sell, hire or authorise others to use the product. Importantly, with this exclusive right, the owner can prevent others from copying, making or selling the product. This right can be important for many different types of products to ensure the owner can maintain a monopoly in the product design. In many cases design registration is an affordable and effective option to protect against copying.

A registered design initially lasts for 5 years and can be renewed for a further 5 year period. After this period, the owner no longer has a monopoly to the design and others can copy and use the design without your permission, and without paying royalties.

What can be registered as a design?

Any products with a unique or distinctive appearance can be registered as a design. Design registration is available to physical products that are manufactured or handmade and can be reproduced. Some examples of products for which design registration is commonly sought include furniture, bottles, clothing articles, packaging, electronic appliances, toys and fabric.

Registered designs do not protect ideas, processes, the functionality of a product, the size of a product or the name or logo for a product (but in some cases there may be other available intellectual property rights which do protect these things).

If the look of the product is important, a registered design is beneficial to prevent others from copying this.

Differences between registration and certification

There are two key stages to obtaining an enforceable design registration for your product:

  1. The first stage is registration. At this stage, IP Australia (the government department responsible for IP rights in Australia) will simply confirm that it meets various formalities requirements. Once registered, a registered design enables its owner to use or authorise others to use the design. However, a registered design cannot be enforced against others until the second stage has also been completed.
  2. The second stage is examination and certification. This involves an Examiner at IP Australia assessing the design application against the legislative requirements. The Examiner will assess the design against other similar designs, and if the design is too similar to an earlier design, it may not meet the requirements of certification. Once certified, a design can be legally enforced against others using the same or similar design without the registered owner’s consent.

Requesting examination and certification is optional. A design can remain registered and a certificate will be issued after the registration stage. However, examination and certification is required in order to enforce the right against others.

Requirements for a valid design registration

At the registration stage, a design application must meet various formalities requirements, such as providing a product name, name of the designer as well as applicant and, importantly, clear representations of the design that show all aspects of the design.

When certification is requested, the design application is more substantively examined. In order to pass examination and achieve certification, a design must meet various further requirements. The two key requirements at this stage are that the design must be ‘new’ and ‘distinctive’. This means that the design must not already have been published anywhere in the world and that it is visually unique compared to other prior designs. A search of similar designs is undertaken by the Examiner to make this assessment. It is important to file for design registration before publishing or disclosing your design – publishing your design, including on social media, prior to filing a design application can invalidate your registered design. Whilst there is a new grace period to allow for an applicant’s self-publication of a design, this only applies to disclosures that occurred after 10 March 2022 and within 12 months of the filing date of the design application.

NOTE: Ensure that you keep your design secret until you have filed for design registration. Even if you are only revealing your design to your investors, manufacturers, distributors and other commercial partners, you should first ask them to provide a confidentiality agreement or non-disclosure agreement to ensure that your design stays secret.

Key Takeaways

In many cases design registration is an affordable and effective option to protect against copying. It is most relevant to products where the visual appearance of the product is important to its marketability. If you are considering design registration, ensure to keep your design secret until you file for design registration. Remember that examination and certification of the design is optional, but required before you can legally enforce your registered design rights against others.

Actuate IP has a team of intellectual property experts who can assist with Design Searches, Filing & Prosecution. If you require assistance, you can contact our team on (03) 9098 0713 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.

FAQs

What does design registration protect?

Design registration protects the visual appearance of a product

When can I file for design registration?

You must file for design registration before you publish or disclose your design, although there is a limited grace period for prior self-publication in some circumstances.

What types of things would design registration be useful for?

Design registration can be for any tangible product with a unique and distinctive design. It is most useful where the visual appearance of the product is important to its marketability.