18th July 2016 - ADMIN

You have spent a month of Sundays creating a great new design for your product.

How do you protect your investment in time and money from all the copiers?

The answer may be a design registration if the look or visual appearance of your product gives your business a competitive advantage.

Protects the “look” of your Product

A design registration protects the overall and unique external appearance of the product, not the functionality (for example, as in a patent for an invention). The benefit of a design registration is that if the main feature of your new product is the appearance then a design registration will protect this feature. In general terms, a design protects the shape, configuration, pattern or ornamentation which gives your product its unique appearance.

The Designs Act 2003 (Cth) provides that:

• “design”in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product. The phrase is interpreted in s7 as:

• “visual feature”in relation to a product, includes the shape, configuration, pattern and ornamentation of the product.

The Criteria for a valid Design Registration

Designs must be registered in order for rights to subsist. Beware though, you must meet the requirements under the Act in order to obtain a valid design registration. The design must be “new and distinctive”.

‘new’ – it must not be identical to any design publically used in Australia or published in a document anywhere or disclosed in an earlier registered design application.

‘distinctive’ – it must not be substantially similar in overall impression to a design publically used in Australia or published in a document anywhere or disclosed in an earlier registered application.

The Act provides that a design is new unless it is identical to a design that forms part of the prior art for the design and that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base.

You should not publicly disclose your design (for example, through exhibiting it, selling copies, or posting your design on a website), as you may then not be able to register since it may not be considered new and distinctive.

This means, keep your design under wraps until you have filed your registration. Do not publish it anywhere otherwise you will not meet the criteria for registration as it will then form part of the prior art base. 

Stop the Copiers

A registration under the Act provides the owner with an exclusive right to make, import, sell and/or hire articles or products featuring the design and prevent the copiers from doing the same! Your rights include:

• exclusive right to use the design
• exclusive right to authorise other people to use your design
• a registered design which is ‘personal property’ that can grow in value and can be sold
• a registration that covers the whole of Australia.

Enforcing your Rights

The process of initial registration does not involve a substantial assessment of the design by IP Australia. To enforce your design rights against an infringer, the registered owner of the design must request the Registrar to examine the design and clarify its validity by issuing a ‘Certificate of Examination’.

Contact w3ip on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.