If you are planning on using a design that is registered by another party, you will need to get permission from this party before using the design in any way. It’s as simple as that. If you use a design that is registered by someone else without their permission, you will be infringing on their intellectual property rights and will be open to facing a number of legal actions that they can launch against you. An IP lawyer can assist in advising on issues relating to use of designs.

What is a design?

According to the Designs Act, a design refers to the shape, configuration, pattern or ornamentation of a product, which gives it a unique appearance. This product must be new and distinctive in order to be classified and registered as a design.

Search the register

If you think the design you would like to use has been registered by someone else, you should check the Australian Designs Data Searching. This is an online database that records designs that have been registered in Australia. You can access this database at: http://pericles.ipaustralia.gov.au/adds2/adds.adds_start.intro

Alternatively, an IP lawyer can assist with a search.

How can I get permission?

If the design that you would like to use is registered, you will need to approach the owner of the design for permission to use it. Often, registered owners of intellectual property will enter into licence agreements with other parties if they agree to allow the other parties to use the registered intellectual property.

Through the owner giving you a licence to use their designs, you are not being given ownership of the designs in any way. Rather, the licence agreement will clearly specific when and how you can use the intellectual property and what licence fees and royalties will arise as a result of this usage. Check with an IP lawyer if you’re unclear on the above.

Can I buy someone’s intellectual property?

There is also the possibility that a registered owner of a design will agree to sell you their intellectual property rights. This is referred to as “assignment”.

If a person assigns their intellectual property rights to you, this means that they are transferring their ownership of the property to you. After assigning their rights to you, the original owner of the design cannot impose any obligations on you regarding your use of the intellectual property.

Conclusion

If you would like to use someone’s design, we strongly suggest speaking with an intellectual property lawyer and seeking legal advice. An IP lawyer can tell you if you are currently infringing any intellectual property rights, if the licence agreement offered by the owner of the design is fair and reasonable to you, and finally, how you can arrange for the owner of a design to assign their rights to you.

Ursula Hogben

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