Design Registration in Australia
What is a design?
The Designs Act 2003 (Cth) 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. Design registration is intended to protect designs which have an industrial or commercial use. The purpose of design registration is to protect the unique visual appearance of a product.
A design registration protects the appearance of the product but not the functional use of it or the way it works. A design must be formally registered in order to receive protection in Australia. The owner of a registered design has the exclusive right to use, sell or licence the registered design.
How is a design different to a trade mark or copyright?
A trade mark is a sign that a trader uses on their goods or services to distinguish their brand in the market from the signs of other traders so that consumers associate that mark with the brand. A trade mark is typically filed in the form of a work mark or a design mark (a ‘logo’) whereas a design covers the visual features of a product such as its shape, configuration, ornamentation, pattern, lines, or contours.
Copyright protection applies to original literary works, dramatic works, musical works and artistic works. It protects the owner’s original expression of an idea. A copyright owner has the exclusive right to use, sell or licence the copyright work. There is no registration requirement for copyright to subsist.
In sum, a registered design means only a right in the overall appearance of a product including the shape, configuration, pattern and ornamentation resulting from one or more visual features of the product.
What are the requirements for design registration under the Designs Act 2003 Cth?
Section 15 (1) of the Designs Act sets out the criteria for registrability of a design:
A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design.
A design must be both new and distinctive to be registered under the Designs Act when compared with the prior art. This means it can’t be the same or similar to designs that have already been produced. If your design is not new and distinctive, you may not be able to gain certification. If the design is unique, it can be registered.
The prior art base for a design consists of the following: designs publicly used in Australia, designs published in a document within or outside Australia, designs in relation to which each of the following criteria is satisfied:
- The design is disclosed in a design application
- The design has an earlier priority date than a designated design
You can search existing design records through the IP Australia Designs Data Searching (ADDS) databases which has images of all registered designs from 1985.
Process for Registration and Formalities
In order to begin the registration process, you must file a design application with the Designs Office. You will need to prepare an accurate visual representation of your product. This will begin the formalities process, to find out if there are any issues with your design application.
If there are any issues with the application, a notice will be sent notifying you that the filer of the application has two months to correct these deficiencies. If your design is able to overcome any issues raised during the examination process, the next step in the process is registration. The design will be published on the Design register as a registered design.
Certification after registration
Once the design is registered, it is not enforceable until it has been certified. In order to certify your design, you must request an examination from IP Australia. A registered design that has been examined and certified gives you a legally enforceable right to use your design exclusively and stop others from using it without your permission.
IP Australia observes two considerations when you request an examination: whether your design is new and whether your design is distinctive?
Why should I regiser my design?
If you‘ve designed something new that has a special configuration or aesthetic, and you do not want anyone else to copy it, you should consider registering your design. As the registered owner of a design, you:
- have the exclusive right to use the design specified in your registration
- have the exclusive right to authorise other people to use your design
- have a registered design which is ‘personal property’ that can grow in value and can be sold
- have a registration which covers the whole of the Commonwealth of Australia
Term of Registration
The term of design protection is five years and a design registration can be renewed for a further five years.
What designs are not registrable
There are certain designs that are excluded from registration which include medals, coats of arms, flags or seals of the Commonwealth or another country and designs that are scandalous.
Take away points
- A design registration protects the visual appearance of a product
- The maximum term of design protection is ten years
- Design registration gives the designer an exclusive right to exclude others from using or imitating their design
- Your design is not enforceable until certified by IP Australia
Lara Alexandra, Legal Assistant and Trade Mark Administrator
We are a team of trade mark attorney and IP specialists based on Gold Coast and Sydney. If you have any questions about trade mark and brand protection, contact us on 1300 77 66 14
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.