• Under the Design Act 2003 (Cth), a design is a type of intellectual property. It refers to the features of shape, configuration, pattern or ornamentation that give a product a unique appearance. A registered design must be ‘new’ and ‘distinctive’.
  • Registering a design protects the look of the product (visual appearance), but not the ‘fundamental form’ of the product itself.
  • If someone has infringed your registered design, or you believe it is being infringed, you should consider requesting examination immediately.

Purpose of Design Registration

Designs protect the visual appearance of products that are ‘new’ and ‘distinctive’. A design application protects the overall appearance of a product that you have designed. You can register your design in Australia and overseas.

Registration protects your design for five years from the date you file the application. You can renew your registration for a further five years, but registration will cease if you do not renew. If you fail to renew your design application and the design becomes public knowledge, it becomes free for anyone to use.

New and Distinctive

To be registrable, a design must be both ‘new’ and ‘distinctive’. For a design to be ‘new’, it must not have been: 

  • publicly used or advertised in Australia; or 
  • published within or outside Australia. 

A design has to be ‘distinctive’ when compared with the prior art base to be registrable. A design will generally be distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base.

The difference between being new and being distinctive is that: 

  • ‘new’ requires a degree of novelty, in the sense of not being known or used before the priority date; and 
  • ‘distinctive’ requires something to have more than subtle distinguishing features. 

The priority date is the date which the application is filed.

A design not being distinctive is a lower threshold (the design only has to be ‘substantially similar’ to a design forming part of the prior art base). Comparatively, a design not being new has a higher threshold (the design has to be ‘identical to’ a design forming part of the prior art base). Hence, a design can be new (not identical) without necessarily being distinctive, as it might meet the lower threshold of being ‘substantially similar’.

Exclusive Rights

As the registered owner of a registered design, you have the exclusive right to use, license, and sell your design. A design will become enforceable once: 

  • it is registered; and 
  • you receive the certificate of registration.

Benefits of Design Registration

A registered design can be a valuable commercial asset. As a registered owner of a design, you have:

  • exclusive rights to use the design;
  • the exclusive right to authorise other people to use your design; and
  • a registered design that is personal property. As personal property, you can sell, license, assign or mortgage your design.

Key Issues

  • Novelty and distinctiveness are to be judged by looking at the overall impression of the design.
  • If you have already publicly disclosed your design (e.g. exhibited, sold copies or posted your design on a website), you may not be able to register it. This is because it may no longer be new and distinctive.
  • To register a design overseas, you need to make a new application in each foreign country. Under the Paris Convention, if you file an application in a country that is also party to the treaty within six months of filing an application in Australia, then the priority date for the foreign application will be the date you filed your Australian application.

Design Registration Process

To apply to register a design, you will need to comply with the minimum filing requirements. Your application may also include additional material relating to whether a registered design is new and distinctive. This statement is optional but it can be beneficial to identify how your design meets the new and distinctiveness criteria for IP Australia.

Registered designs are listed in electronic databases, which are made public through the:

  • AU Designs Data Searching (ADDS); and 
  • Official Journal of Designs.

Application

You can apply to have your design registered, so long as you are the: 

  • designer of the design; or 
  • employer of the designer. 

You need to clearly illustrate the design with either a drawing or photograph. You can apply to protect one design per application. However, when you file a design application it involves fees. If the design application passes the formalities check set by IP Australia, the design will be: 

  • registered and advertised in the Australian Official Journal of Designs; and 
  • made available for searching in the Australian Designs Data Searching (ADDS) database. 

IP Australia will process your application within two months. You must request registration when submitting the application, in writing, within six months of the filing date of your application. Once your design is registered (i.e. found to be valid during the examination), you will be issued a certificate of examination. You can use this certificate when dealing with any infringement issues.

Frequently Asked Questions About Designs

What is the relationship between copyright and design?

Copyright protection for original and unique work automatically applies in Australia. Even though you are afforded the automatic copyright protection for your design, your design application provides another layer of protection.

How is novelty assessed for a design?

The test for novelty is whether the design is one that is known or has been used before the priority date.

If a person uses what looks like a registered design on a different article, is this an infringement?

It is only an infringement of the design if a person uses the design about which the design is registered. Therefore using the design on a different article is not an infringement.

Can you parallel import a design?

It is the exclusive right of the registered owner of a design to import such a product into Australia for sale, or for use for the purposes of any trade or business. You will be infringing on a registered design if you, without a license from the design owner, import the product into Australia or use that particular product for the purpose of trade or business.

When will a design not be suitable for protection by either designs or copyright?

A design will not be suitable for protection by either a design application or copyright where it is a ‘corresponding design’ that has been registered, but the registration period has finished, or a registered design has been applied in relation to a different product.

How can LegalVision help me?

LegalVision provides businesses and individuals with tailored online legal advice, including all intellectual property enquiries and registrations. Call LegalVision today on 1300 544 755.

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