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What is the process for applying for a registered design?

What is the process for applying for a registered design?

Posted 13 May 2022 by Jennifer Driver

Categories: Registered Designs

A registered design protects the visual appearance of a product. This may be a combination of the product’s shape, colour, configuration, pattern or ornamentation. It can be relevant for any type of product that has a unique or distinctive appearance, this commonly includes furniture, bottles, clothing, packaging, electronic appliances, toys and fabric. Ensuring the design application is filed correctly from the outset is important to creating a strong and enforceable design right. This article sets out what is needed to apply for a registered design, and the process from application through to certification.

Do you have a design to be protected?

Before applying for design registration, it is important to understand if you have a design that can be protected. Firstly, is your product something that can be manufactured (by machine or hand) repeatedly with the same overall look, and is the look of the product important?

Secondly, one of the key requirements for design registration is whether the design is new and distinctive. This means that the design must not have been previously published anywhere in the world, and it must be visually unique compared with other prior designs. In other words, even though you may have designed your product, is it really the first in the world with that particular appearance?

Also of relevance is the date you first published your design – this may be releasing your design / product to the market, or it may be posting a photo / drawing on social media or on a website. Ideally, it is best to file for design registration prior to publishing your design at all. However, there is a grace period to allow for an applicant’s self-publication of a design within 12 months of the filing date of the design application.

NOTE: The grace period for self-publication of designs only applies to disclosures that occurred after 10 March 2022 and within 12 months of the filing date of the design application. If you published your design before this date, and before filing for design registration, your application may be invalid.

For more information about what a registered design is, see our article on ‘What is a registered design?’.

What information is required in order to file an application?

Most of the information included in a design application is straightforward such as the designer’s name, the applicant’s details and name of the product itself.

The key part of the design application, however, are the representations of the design. Representations are the images of your design, and it is important that these show all the visual features of the design. This is best done by including a number of labelled views of your design (such as front, back, top, bottom and perspective views). Ensure not to include any other information on the representations such as dimensions. Whilst photographs of your design can be acceptable in some cases, clear line drawings are preferred. If using photographs, ensure they are taken against a neutral background. Either way, each of the representations must be consistent and show only the one design.

The final piece of information to consider including in a design application is a Statement of Newness and Distinctiveness – this is optional and is used to highlight any particular features of the design that are new and distinctive. This statement will be considered by the Examiner when assessing whether the design is new and distinctive, a requirement for certification.

The 2-step registration process

Step 1: Registration

After paying the government fees and filing your design application, it will undergo a formalities assessment generally within 2 to 3 months. This is simply to check that all the key information has been provided in the application. If any issues need to be resolved, there is a 2 month period in which to do so. If no issues are raised at this stage, a Certificate of Registration will be issued and your design will be registered. This completes Step 1.

Step 2: Examination and certification

This step is optional and takes a further 2 to 3 months. Certification is required if you want the option to enforce your design rights against others – you cannot do this after step 1. If you wish to obtain certification, examination must be requested and paid for. When certification is requested, the design application is more substantively examined. This involves an Examiner at IP Australia assessing the design against a number of legislative requirements. The two key requirements are that the design must be new and distinctive, as discussed above. A search of similar designs is undertaken by the Examiner to make this assessment.

If any issues are raised at examination, there is a period of 6 months in which to address them. If no issues are raised, or the issues are resolved, the design will be certified and a Certificate of Examination will be issued.

A design registration 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 recourse.

NOTE: Anyone can request examination of a registered design (such as a competitor). They may do this to test the validity of the registered design. To do so they must pay half the examination fee (with the applicant required to pay the balance).

Key takeaways

Prior to filing a design application, ensure you have all the information required. Clear representations (ideally line drawings) of the design showing all views of the product are an integral part of the design application. Remember that examination and certification – step 2 of the design process – is optional but required before you can legally enforce your 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.

What are the representations?

The representations are the drawings or photographs which show your design. They must show all aspects of your design, generally by way of a number of labelled views of the product and should not include any additional material.

How long does the design registration process take?

The period from filing to registration is usually around 2 to 3 months. Examination and certification is commonly a further 2 to 3 months.