Do you have a new and distinctive design which you want to protect others from copying? Perhaps you work in certain industries where design is of particular importance, such as industrial design or fashion. Registering a design provides you with strong protection against wannabes and copycats. However, there are some legal hurdles you will need to jump through. This article will explore two fundamental points every business should consider before they apply for a design registration in Australia.
1. What is a Design?
A design registration seeks to protect the visual appearance of a product or item which has a commercial and industrial use. These can range from bathroom and kitchen fittings, clothing, furniture, bags, cars, household items and electronic goods. In fact, you’ll be surprised to learn how many everyday items you use which have a design registration. When you register for a design with IP Australia, they grant you an initial term of five years protection which you can renew for an additional five years after that. When IP Australia registers a design, the designer has the exclusive right to exploit their design for the lifespan of the registration.
It’s important to remember that design does not apply to the fundamental form of the product itself. Rather, it refers to the visual features of the product such as the shape, pattern, ornamentation or configuration. For example, one of the oldest and most iconic designs is the shape of the well-known Coco-Cola bottle. While the fundamental form of the product is a bottle, the design registration prohibits manufacturers from replicating the particular shape.
2. Does my Design Meet the New and Distinctive Test Requirement?
For IP Australia to grant a design registration in Australia, the design must be new and distinctive when compared with prior art at the time of the application.
When considering the prior art base, IP Australia will review designs which have:
- Been publicly used in Australia;
- Published in a document overseas or in Australia; or
- Publicly disclosed in design applications.
You cannot register your design if someone has already commercialised a design, the design is existing in the market, or the design is published anywhere in the world. The reason for this is because the design will no longer be new and distinctive in these circumstances. Rather, IP Australia will regard it as part of the prior art base.
To support your application for a design registration, you may wish to include a statement of newness and distinctiveness. While this is not mandatory for applicants, it is worthwhile to include, as examiners are required to have regard to any features identified in the statement.
3. Am I the Rightful Owner of the Design?
Only the right owner of a design can make an application for a design registration. As a general rule, a person will be regarded as the owner of a design if they satisfy at least one of the following criteria:
- They developed the design (i.e. they are the designer);
- They are the employer, in circumstances where an employee made the design in the course of employment;
- They are the person who contracted another party to make the design for them; or
- They are the person who was assigned the rights to the design in writing.
If two parties conceived a design, they must make a joint application to protect each of their interests. In circumstances where employees or contractors made a design, it is prudent to address intellectual property ownership in the contract of engagement to avoid subsequent disputes regarding ownership. To this end, an individual, company, partnership, or an association can make a design application to IP Australia.
Design law seeks to protect the look of a product, as opposed to the fundamental form. It provides a designer with an exclusive proprietary right to exploit their design for the length of their registration. For IP Australia to grant a design registration, you must satisfy the new and distinctive threshold test. It is important to remember that commercialising your product or publicising your design will destroy your right to obtain a registration, as it will no longer be deemed new and distinctive. Lastly, remember that where two parties conceived a design, they should submit a joint application to protect both interests.
At LegalVision our lawyers have specialised expertise in all aspects of the intellectual property law. If you would like to speak to one of our experienced IP lawyers about designs, call us on 1300 544 755 for fill in the form below to get in touch.