As a business owner, it is crucial to understand your business’ design rights so you can enforce them if need be. Design rights give you the exclusive right to use, license or sell your design within Australia. However, there are some steps you must first take before you can legally enforce these rights. This article will outline how you can enforce your design rights.
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What is a Design?
A design is the overall physical appearance of a product, including it’s:
- shape;
- colour;
- configuration;
- pattern; or
- ornamentation.
However, designs do not include the materials used to create the product, nor how the product functions.
Registration and Certification
There are two steps to protecting your design rights. These include registration and certification. The first step is to apply for registration online through IP Australia. Once they approve your application, your design will be registered.
Next, to ensure your design is legally enforceable, you must have the design certified. To do this, request that IP Australia examine your design. If your registered design passes the examination, your design registration will be certified.
Continue reading this article below the formEnforcing Your Design
Once you certify your design, it is your responsibility to look out for anyone who may be infringing your design right by using or copying your design without your permission. Unfortunately, IP Australia is not a watchdog for design rights infringements and does not take legal action on your behalf if an infringement occurs.
If someone infringes on your design rights, you can commence legal proceedings per the Designs Act 2003. However, you should attempt to resolve a design right dispute outside of court, if possible, as the legal proceedings are lengthy and costly.
Letter of Demand
If someone within Australia infringes on your design rights domestically, you can send them a letter of demand. The letter should:
- identify the infringement;
- outline your IP rights;
- provide an opportunity to stop infringing and rectify the infringement; and
- inform them that the next steps may include commencing proceedings.
Often, sending a letter of demand will stop the infringer. So, you can avoid the need for further legal proceedings. You can seek legal advice if you need assistance drafting and sending a letter of demand.
Alternative Dispute Resolution (ADR) Methods
You can attempt to resolve your dispute through ADR instead of going to court. ADR includes options such as:
- mediation;
- arbitration; and
- expert determination.
ADR is usually not legally enforceable, although some arbitration decisions can be legally binding. Further, it can assist in coming to a resolution with the party at a low cost and in a shorter period.
Going to Court
You could initiate court proceedings if ADR is not a suitable means to resolve your dispute. In court, you could seek the following orders.
Injunctions
You can apply for an interim injunction if your design rights have been breached. If the court issues an injunction, the other party must immediately stop copying and distributing reproductions of your design, even though a breach has not yet been proven.
The court will only issue an interim injunction if they believe the issue is serious enough that monetary damages would be an insufficient remedy. If the court later concludes there was a breach, they may issue a final injunction. However, if the court later finds no breach, you may need to pay compensation to the other party.
Preliminary Discovery
Sometimes it is unclear who has infringed your design right. A court can order preliminary discovery to assist you in tracking down the infringer’s identity to commence proceedings against them in the future.
Damages
If the court determines that there has been an infringement, relief may include damages or an account of profits. In addition, the court may award further damages that it considers appropriate depending on how noticeable or evident the infringement is while also considering other relevant matters.
Before deciding how best to enforce your design rights, it is essential to receive legal advice on your options, the remedies available, and the likely outcomes and associated costs.
Key Takeaways
Ultimately, design rights play a critical role in protecting your business’ designs and preventing infringement from other parties. To avoid any infringing on your designs, you should make sure your design is not only registered but also certified so that you may enforce your rights. Additionally, keep an eye out for possible infringements as IP Australia will not be policing copies of your design after it has been registered.
Several enforcement options are available to you, including taking the matter to court. We recommend seeking advice from a lawyer to discuss what options suit you best.
If you believe your design right has been infringed, our experienced dispute resolution lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A design is the overall physical appearance of a product, including its shape, colour, configuration, pattern or ornamentation. However, designs do not include the materials used to create the product, nor how the product functions.
If someone within Australia infringes on your design rights domestically, you can send them a letter of demand. The letter should identify the infringement, outline your IP rights, provide an opportunity to stop infringement and rectify the infringement and inform them that the following steps may include commencing proceedings.
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