A design is a type of intellectual property.
It can be described as the way a particular product looks - its overall visual appearance. For example, it’s shape, configuration, pattern, ornamentation - or the way a product is packaged. The product must have a physical and tangible form.
Registering a design is one method to help minimize the risk of competitors or others selling and promoting “look-alike” or very similar products to those that you sell and market.
Design registration protects the appearance of a product, BUT NOT:
. its function;
. how it works;
. materials used.
Applying for a Registered Design
Applications must be made using the prescribed form and a filing fee must be paid.
The Application must identify the product. The product is classified based on its intended purpose or use into one or more classes.
When applying to register the design a Statement of Newness and Distinctiveness (SOND) can be included to emphasise those particular visual features of the design which are considered to be new and distinctive.
Typically, when the Application is filed you would also request registration. However, a registration request can be made up to 6 months after the priority date of the application.
The Designs Office will carry out a formalities check, and if all is in order the design will be registered and advertised in the Australian Official Journal of Designs.
Registration gives you the right to use, license and sell your design.
Examining a Registered Design
In order for the designer to be in a position to legally enforce its design rights against an alleged infringer, the design must be ‘certified’ by way of a formal examination process. If the design passes the examination stage a Certificate of Examination is issued.
Examination is not automatic and must be requested.
The Examiner will assess whether the design is ‘new’ and ‘distinctive’ when compared a broad prior art base which includes designs published in documents anywhere in the world and designs publicly used within Australia.
In Australia, the Designs Act 2003 and Design Regulations 2004 provides the statutory framework in relation to registered designs.
Core Concepts of Registered Designs
There are a number of core concepts relevant to registered Designs, which include, among others:
Secrecy | Disclosure
In order for a design to be registered it must be new and distinctive.
If you have already disclosed your design, for example, at a trade fair, through social media, or on the internet - you may well be unable to register that design, as the Design Office will consider the design as no longer new and distinctive.
If you register the design prior to manufacturing and offering products for sale based on the design, your IP rights are protected.
However, if the design has been applied industrially (more than 50 items), and the design has not been registered, then any copyright will not assist the designer and other third parties would be legally able to copy the design.
So, timing and the treatment of the design is critical.
The grant of a registered design gives the registered owner exclusive rights to:
· use the product;
· import or export the product;
· licence the product;
· hire or sell the product; or
· otherwise dispose of the design.
Term of Registration
5 years (plus a renewal for a further 5 years).
Infringement and Enforcement
The owner of a registered design that has been examined and certified is able to take action against third parties who sell and market not only identical products, but also those products which are substantially similar in overall impression to the registered design.
It is important before filing for a Registered Design that you check that a similar design has not already been filed by another person and still current. This will minimise time and costs, and reduce the risk of you inadvertently infringing another person’s design rights.
This is typically the date upon which you first file an Application for a Registered Design.