- A design refers to the features of shape, configuration, pattern or ornamentation that give a product a unique appearance, and must be new and distinctive.
- Registering a design protects the look of the product (visual appearance) and not the ‘fundamental form’ of the product itself.
- If your registered design is infringed, or you believe it is being infringed, you should consider requesting examination immediately.
Purpose of Design Registration
Designs protect the new and distinctive visual appearance of objects. In the Designs Act 2003, a design is defined as, “about a product, means the overall appearance of the product resulting from one or more visual features of the product.” A design can be registered in Australia, provided it is both new and distinctive.
New and Distinctive
A design has to be distinctive when compared with the prior art base to be registered. A design will 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, whereas ‘distinctiveness’ requires something to have more than subtle distinguishing features.
Therefore, there is a lower threshold for a design not to be distinctive (only has to be ‘substantially similar’ to a design forming part of the prior art base) than for a design not to be new (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’)
The registered owner of a registered design has the exclusive right, during the term of registration of the design to make or offer to make a product, in relation to which the design is registered, which embodies the design.
- The novelty and distinctiveness are to be judged by looking at the overall impression about the design.
- If you have already publicly disclosed your design (e.g. exhibited, sold copies, posted your design on a website), you may not be able to register it as it may not be considered to 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 for a design in Australia and within a period of six months you file an application in a country that is a party to the treaty, then the foreign application is entitled to have the date you filed your Australian application as its priority date.
Design Registration Process
The application involves complying with the minimum filing requirements in the regulations. The application may also include additional material relating to whether a registered design is new and distinctive. This can be used to focus the assessment of substantial similarity in overall impression under s 19 for the purposes of assessing newness and distinctiveness and infringement.
Registered designs are held in some electronic databases, which are made public through the AU Designs Data Searching (ADDS) and the searchable Official Journal of Designs
Any legal person can apply for a design to be registered, so long that they are the designer of the design or the employer of the author. The design needs to be represented clearly through either a drawing or photograph. There are fees associated with filing a design application. 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 an application within two months.
You must request registration when submitting the application, in writing, within six months of the filing date of your application. Approximately four months from requesting examination, a report will be issued which will allow maintaining protection of the design.
Frequently Asked Questions about Designs
Q: What is the relationship between copyright and design?
A: The ability to protect artistic works and the exclusive rights to reproduce those works in another dimension provided by the Copyright Act overlaps with the protection afforded under the Designs Act.
Q: Is a house floor-plan registrable as a design?
A: The floor plan of a house is probably not a registrable design as it would likely fall under the category of a ‘method or principle of construction’. This is because a person looking at the floor plan could not form a mental picture of the shape, configuration, pattern or ornament of the house to which the design is to be applied.
Q: How is novelty assessed for a design?
A: The test for novelty is whether the design is one that is known or has been used before the priority date.
Q: If a person uses what looks like a registered design on a different article, is this an infringement?
A: 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.
Q: Can you parallel import a design?
A: 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; and it is an infringement of a registered design if during the term of registration of the design and without the licence of the owner a person imports such a product into Australia for sale, or for use for the purposes of any trade or business.
Q: When will a design not be able to be protected by either designs or copyright?
A: A design will not be able to be protected by either designs or copyright when it is a ‘corresponding design’ that has been registered but the registration period has finished, or where a registered design has been applied in relation to a different product
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