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Key Considerations Before Applying for a Design Registration

You work in an industry where design innovation is important, for example, clothing furniture or jewellery. Perhaps you also have a new and distinctive design that you do not want others to copy. In order to protect your design, you need to register it with IP Australia in order to obtain design law protection. As the owner of a new and unique design, there are some factors that you need to consider before you go ahead and file a design registration.

Design definition

A design refers to the overall appearance of a product – the shape, pattern, ornamentation or configuration. What a design registration protects is the visual appearance of an industrial or commercial product, not its basic form.

Design applications can be filed for products that can be found in any home – bathroom and kitchen fittings, cars, furniture, bags, clothing, electronic goods, and household materials.

When a design is registered, IP Australia grants the owner of the design a protection term of five years to capitalize on their design during the lifespan of the registration. The term of the registration is renewable for another period of five years. The exclusive rights granted by a registered design are limited to the visual appearance of the product. An Australian registered design has effect throughout the whole of Australia.

New and distinctive test

Only new and distinctive designs can be registered and thereby obtain protection under design law. The term “new” means that your design is not identical to any prior art design anywhere in the world, which includes any published on the world wide web. “Distinctive” means that your design should not be “substantially similar in overall impression to another design.”

It is very important to keep your design secret until a design registration has been filed. If you have already made your design public by posting it on the internet or if you have distributed copies of it elsewhere, then it may no longer be considered new and distinctive.

Although it is optional, owners of designs are encouraged to provide a ‘statement of newness and distinctiveness’ together with their application for registration. The statement can support the identification of particular visual features of the design as new and distinctive.

The rightful owner of the design

Of course, only the rightful owner of the design can apply for a design registration at IP Australia.

The Designs Act 2003 (Cth) identifies the owner of the design as:

  • the person who created or developed the design;
  • the employer of the creator, if the design was made during the latter’s employment;
  • the person who contracted the creator to make the design;
  • the person to whom the creator has assigned the design to;
  • two or more persons who have an interest in the design should apply jointly;
  • the owner may be an individual, a corporation, an association, or a partnership but may not use the trade name in the application as a personal detail identifying the owner

Takeaway points:

  • The owner of a design can apply for a design registration to protect his or her rights against others who copy the design
  • Only new and distinct designs can be registered but the filing of a statement of newness and distinctiveness is optional
  • The term of a design registration lasts for five years and is renewable for another five years
  • A design is based on the visual appearance of the product and this refers to the shape, pattern, ornamentation or configuration of the design which gives a product a unique appearance
  • A design is considered new and distinctive when it has not been published, advertised, or distributed publicly and this includes posting on the internet.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law 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.

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