A registered design protects a product’s visual appearance, which may include a combination of its shape, colour, configuration, pattern, or ornamentation. It can be relevant for any product with a unique or distinctive appearance, which 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 outlines what is needed to apply for a registered design and the process from application 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 product’s look important?

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

Also relevant is the date you first published your design—this may be releasing your design/product to the market or posting a photo/drawing on social media or a website. Ideally, you should file for design registration before publishing your design. 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 a registered design, see our article on ‘What is a registered design?’.

What information is required to apply?

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

The key part of the design application, however, is the representation of the design. Representations are images of your design, and these must show all its visual features. This is best done by including a number of labelled views of your design (such as front, back, top, bottom, and perspective views).

Do not include any other information on the representations, such as dimensions. While 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 representation must be consistent and show only 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 highlights any particular features of the design that are new and distinctive. The examiner will consider this statement when assessing whether the design is new and distinctive, which is 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. You must request and pay for the examination if you wish to obtain certification. When certification is requested, the design application is more substantively examined.

This involves an Examiner at IP Australia assessing the design against several legislative requirements. The two key requirements are that the design be new and distinctive, as discussed above. The examiner searches for similar designs to make this assessment.

If any issues are raised at examination, they must be addressed within 6 months. 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 years. After this period, the owner no longer has a monopoly on the design, and others can copy and use it without recourse.

NOTE: Anyone (such as a competitor) can request an examination of a registered design to test its validity. To do so, they must pay half the examination fee (the applicant must 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, Filings, and prosecution. If you require assistance, you can contact our team on 1300 851 138 or info@actuateip.com.au, and our friendly staff will ensure 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 several 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 2 to 3 months. Examination and certification take a further 2 to 3 months.