Protect the visual appearance of your finished products with design registrations.
To be validly protectable by a registered design the visual appearance must, broadly speaking, be new and distinctive compared to that of previously known products.
Registered design protection can however be very commercially valuable, for example for protecting the appearance of a product for which appearance is commercially important, for providing intellectual property rights in a product for which patent protection is not available, for providing a relatively straightforward way to protect against direct copy products (even of largely or entirely functional products, such as internal components of machinery) and for providing an additional layer of protection, with different scope, for products which are also to be protected by patents.
It is important to appreciate that the protection of the visual appearance of a product by a registered design is in contrast to protection for the functional aspects of a product or process which can be provided by patent protection. That is, a registered design does not prevent a competitor from making a product which functions in exactly the same way as design owners product if the competitors product is substantially different in appearance to the registered design.
The Australian Designs Act defines a design, in relation to a product, as meaning “the overall appearance of the product resulting from one or more visual features of the product.”
A design is registered by filing a design application, including representations (typically drawings or photographs) of the product, which show the visual features of the design.
A resulting Registered Design can therefore be regarded as registration of the design as shown in the representations. However, there are other parts of the application, and resulting registered design, which can significantly affect the scope and commercial value of the protection conferred. These include the way the product is named, and any ‘Statement of Newness and Distinctiveness’.
Such a registration can confer a right to exclude others from unauthorised commercialisation of a design which is identical to, or substantially similar in overall impression to, the registered design. The acts that the design owner has a right to exclude others from doing include making, selling or hiring such a product or offering to do so, and also extend to importing such a product or keeping a product for the purpose of its sale, hire or use.
How similar an unauthorised product must be to fall within the scope of the registered design is dependent on a number of factors including any “Statement of Newness and Distinctiveness” which forms part of the of registration, on how different the registered design is from earlier designs, and to what extent the designer is free to innovate.
Australian registered designs have a maximum term of ten years. A single renewal is payable after the first five years to extend the term to the full ten years.
The visual features that together create a design are often considered in terms of three dimensional features (for example the shape and/or configuration of an object such as a car), two dimensional or ‘surface’ features (for example the pattern and/or ornamentation of a textile) or a combination of two and three dimensional features (such as the shape and surface decoration of a dress). While most products have both a three dimensional shape and two dimensional surface features (including colour) a well-prepared design application can generally be directed to either or both of these types of features.
In order to be registrable, the design must be ‘in relation to a product’. This can exclude registrability of a design that relates to something other than a ‘product’.
The Australian Designs Act defines a ‘product’ as a ‘thing that is manufactured or hand made’, so few types of commercially produced article are excluded from registered design protection.
Further the design is not required, under Australian law, to meet any threshold of attractiveness or ‘eye-appeal’, and functional designs are not excluded.
There are some particular areas where, under Australian practice, a design has not been considered to relate to a ‘product’. These areas include typefaces or fonts, and designs which exist only transiently due to the action of a product, such as a pattern of water from a sprinkler or a graphical user interface which exits temporarily on the screen of a computer or smartphone. We have strategies for addressing many of these restrictions (although detail of these is beyond the scope of this summary).
There are also some types of designs which Australian Designs law excludes from registration, including designs for medals, designs which consist of a flag or emblem of a State, a Territory or another country, and designs that are ‘scandalous’.
In Australia, a design must be new and distinctive in order for it to be registrable.
A design is considered new unless it is identical to an earlier design, and is considered distinctive unless it is ‘substantially similar in overall impression’ to an earlier design.
Broadly speaking, this comparison is made with earlier designs which form part of the ‘prior art base’ before the effective filing date of the design application. This consists of: designs publicly used in Australia; designs published in a document within or outside Australia; and designs in earlier Australian design applications which are eventually published.
In contrast to patent protection, there is no grace period for design registrations. Thus publication of a document showing the design, or use of the product embodying the design, even a day before the filing date of the application may make a design application invalid.
Australia provides a system in which design applications proceed to registration after a check for formalities, and without any substantive examination to determine whether the design is new and distinctive over earlier designs. When the application has passed the formalities check the design proceeds to registration and is published.
When the design is registered you may mark corresponding products and their packaging to notify others that there is a registered design.
However, the design is not enforceable, meaning legal action cannot be taken and threats of legal action must not be made, until the design registration has been examined by IP Australia and a certificate of examination has issued.
Design registrations are not examined until a request for examination is filed. When examination is requested IP Australia will perform a substantive examination, assessing (among other things) whether the design is new and distinctive. If the design registration passes this examination a certificate of examination will issue. If the examiner believes that the design is not validly registrable an examination report will issue, and if the objections raised are not overcome the design registration will be revoked.
Requesting examination is an optional step. Many design owners are content to leave their registered designs unexamined until there is a commercial need for examination, such as a need to enforce the registered design against a perceived infringement. About 80% of registered designs have not been examined. However, some large companies take the approach of having their registered design examined at an early stage, even if there is no known infringement.
We can advise on strategy regarding examination, taking into account your particular circumstances.
In order for us to prepare a design application we require representations of the product embodying the design.
We can, of course, provide assistance in preparing suitable representations. As the representations form such a crucial part of an application, and of any resulting registered design, there are often strategic considerations involved in preparing the representations, and we will be happy to advise.
We usually prefer to use monochrome line drawings of the product. Photographs may be used, provided they show the product clearly, including the visual features of the design for which protection is sought. However, use of good quality line drawings is often a better choice, for example because line drawings can better allow emphasis of important visual features and omission of features of the product which are not central to the design which it is desired to protect.
Once the representations are in order, we have received the other information discussed above, and you have approved our proposed filing strategy, the application can normally be prepared in a day.
The above is a brief overview of registered designs in Australia and should not be used or relied on as legal advice or opinion about specific matters, facts, situations or issues. Other jurisdictions have quite different design law with, for example, some countries having a grace period, and/or allowing registration of ‘virtual’ designs.
If you have more specific questions about design registration then just call or email us. We’ll be happy to answer your questions.
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