You can register a design to protect the look of a product you’ve developed in order to stop people imitating it. A protected design can be a very valuable IP asset, as it gives you exclusive rights to the design in Australia, and you can take legal action if someone copies it. You can also authorise other people to use it.
At W3IP Law, we can advise you on how a design registration can protect the shape or visual appearance of your product. We can also prepare all the required documents on your behalf and attend to all the necessary procedures requirements for a design application, including:
- the minimum filing requirements for a design including the specifications for a drawing, photograph or digital image of your design
- the identification of the design features of your product
- a statement as to why your product is new and distinctive
- the publication or registration of your design
The benefits of registering a design
You will have the exclusive right to use your design in Australia for five years, after which you can renew your registration for a further five years. Your rights include the right to make the product in which the design is embodied, to import the product into Australia, the right to sell and use the product, and the right to authorise another person to do any of these things.
These rights will improve your competitiveness in the market, as others will be prevented from copying or using your design without your permission. You can also assign the design, or licence its use, to another person or business.
Your design will be registered on the publically accessible Australian Designs Data Searching System (ADDS) which informs the public that you’re the owner of the design and deters others from trying to copy it. You can also mark your design with your official design registration number (or with “design registration pending” while your application is being examined).
A design registration can be used together with a patent registration (or as an alternative where a patent is not available). The design registration protects the look of the product, and the patent protects how the product works.
Copyright and design protection each offer their own benefits. It’s much easier to prove ownership of a registered design than relying on copyright where there is no registration. Registering a design which offers certainty may prevent a business from enforcing copyright which may be preferable as it offers a much longer term of protection but is harder to establish.
The meaning of a design
The term ‘design’ is defined in s5 of the Designs Act as “the overall appearance of the product resulting from one or more visual features of the product”. The look of your design includes the appearance, the shape, the configuration (how different parts of the design are arranged together), the pattern and any ornamentation applied to the article.
New and Distinctive
A design must be new and distinctive to be registrable. A published design would not be considered new. A design that is similar in overall impression to another design would not be considered distinctive. A design is distinctive if it is not substantially similar in overall impression to another design that is already in the public domain.
You can search the Australian Designs Data Searching System (ADDS) for existing registered designs, to ensure your design is new and to ensure you’re not infringing the design rights of others with similar designs.
Design rights can be very powerful against competitors because, unlike copyright, a registered design can be infringed where a competitor uses a similar design even when the design was created independently and without copying. You have the right to enforce your registered design against an infringer once it has been examined and a certificate of examination has been issued. Your design is then called a “certified design”.
You should seek legal advice before taking action against an infringer, as threats of legal proceedings are actionable in Australia under the Designs Act.
When you develop a new product, you should keep your design a secret and not disclose the product to anyone until you’ve obtained advice on the availability of protection.
You can publish your design as an alternative to registration. This does not give you any enforcement rights against a competitor, but it prevents a competitor from obtaining design registration rights for the same design, because your published design proves theirs is not new.
How long does it take for a design to be registered?
Your design application will undergo a formalities check and then will proceed to either registration or publication, depending on the procedure you’ve chosen. This usually takes about 6 weeks, but can take longer. The design will be registered if it complies with the formalities, and it will not be assessed in substance. The publication of your design does not give you any enforceable rights, but will prevent others from obtaining design rights. You may request examination at any time during the registration of the design, in order to enforce your design rights. The Designs Office will either find your application valid and issue a Certificate of Examination, or will revoke the registration after comparing it with prior art and any other legal requirements.
You can file a design application for a spare part, but the Designs Act provides an exception for infringement in the form of the “spare parts exclusion”. This exclusion provides that it is a defence to an infringement action if the product was made for the purpose of repair or supplied as a spare part. The use of a part that is protected by a registered design will still be an infringement if it is not used for repair purposes.
Registering a design overseas
You can also protect your design overseas, by filing an individual design registration in each country of interest. Overseas design registrations must be filed by local agents (we can connect you with a good one). If you’ve filed a design application in Australia, you will need to decide within six months if you wish to secure the filing date of your application in Australia as a priority date for a design application overseas.