In Short
- Shape Trade Marks vs Design Rights: Shape trade marks distinguish your goods’ shape in the market, while design rights protect the visual appearance of new and distinctive products.
- Key Differences: Trade marks are renewable every 10 years and can be used pre-registration, while design rights last a maximum of 10 years and require the design to be new.
- Choose Wisely: Consider trade marks for brand identity and design rights for protecting innovative product designs, depending on your business needs and product stage.
Tips for Businesses
To protect your product’s shape or appearance, assess your business needs carefully. If your design is new and undisclosed, consider design rights. For existing products or those central to brand identity, opt for shape trade marks. Plan ahead, as design protection may not apply once your product is public.
If your business has developed a unique shape for your goods, you will likely want to protect it as best you can. Two ways to protect your goods’ unique shape or appearance is by registering a trade mark or a design right — these types of intellectual property (IP) protection overlap. Therefore, you must understand their similarities and differences to make an informed choice for your business. This article will discuss what you need to know about shape trade marks and design rights.
What is a Trade Mark?
Trade mark registration is a form of IP protection that provides exclusive rights to your trade mark. A trade mark should distinguish your brand from your competitors, acting as a badge of origin in the marketplace for your goods and services. This gives you an excellent marketing advantage and is a form of legal protection.
Trade marks may take any number of forms. Your unique business circumstances will determine which is the most useful for you. For example, some of the forms of a trade mark include a:
- word (such as your business name);
- phrase (such as your business slogan);
- sound (such as your business jingle);
- image (such as your business logo); or
- a combination of the above.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Shape Trade Marks
In addition to the above list, a trade mark might take the form of a shape. A shape trade mark consists of a three-dimensional shape. Some well-known examples include Coca-Cola’s bottle or the triangular shape of Toblerone chocolate.
In the Australian context, a notable example is the registered shape trade mark for the iconic Vegemite jar, which is instantly recognisable. Such a shape not only distinguishes the product but also reinforces brand identity.
To register a trade mark for a shape, it cannot be:
- incapable of distinguishing your goods or services from another trader;
- common to trade since commonplace shapes would need to be used by other traders (for instance, the shape of an egg for chocolate); and
- functional, which is to say that a shape with significant functionality may not be easy to register as a trade mark, as other traders may need to use that shape in the ordinary course of trade.
Shape trade marks are frequently utilised by the alcohol industry to protect their unique bottle designs, such as curved or embossed bottles. In competitive markets, a distinctive bottle may not only serve as an identifier but also as a valuable marketing tool, enhancing the product’s perceived value. A prime example is the Hendrick’s Gin apothecary-style bottle.
Continue reading this article below the formWhat Are Design Rights?
Design rights are another type of IP that protects the overall visual appearance of new and distinctive products. ‘Overall visual appearance’ might refer to the:
- shape;
- colour;
- configuration; or
- pattern of your design.
However, it is crucial to consider that a design right does not protect:
- how your product works;
- materials that you use;
- the size of the product;
- the partial design features of a product; or
- the visual appearance of your product changing over time.
To secure design rights in Australia, you must ensure your design is new and distinctive. A new design is one that has not been publicly disclosed, while distinctiveness requires that the design is unique compared to existing designs. You are required to file an application with IP Australia, who will conduct a formalities check and an optional substantive examination. If successful, your design will be registered for five years, with an option to renew once for 10 years.
Furniture designers often rely on design rights to safeguard their innovative product designs, ensuring competitors cannot replicate their unique styles.
Overlap Between Design Rights and Trade Marks
There is some overlap between trade marks and design rights. For example, both can protect:
- shape;
- colour; or
- branding of your goods.
Understanding the Difference
Despite their similarities, some distinctions exist between shape trade marks and design rights. We outline these critical differences in the table below:
| Shape Trade Mark | Design Rights |
| A shape trade mark distinguishes the shape of your goods from those of your competitors. | Design rights protect the overall ‘visual appearance’ of your goods. |
| Trade marks can already be in use in the marketplace before registration. | Designs must be new and distinctive, such that it does not already exist in the marketplace. |
| Shapes that are functional or common to your industry are difficult to protect with a trade mark. | You can protect products with a functional purpose if they are not similar to other published designs. |
| Trade marks can renew every ten years indefinitely. | Design rights can only be registered for one ten-year period. |
Should I Register a Trade Mark or a Design Right?
Depending on the nature of your goods, you might want to incorporate design rights and trade mark registration as part of your IP strategy. However, the best way to assess whether you should invest in a design right or trade mark registration is to assess your unique business needs and eligibility.
If you have not launched your goods, you should consider design protection before disclosing your design to the public. Design protection may no longer be viable if you have already launched your goods. A shape trade mark may be the more suitable option in that case.
As of 10 March 2022, IP Australia implemented a “grace period” for published designs. The grace period may allow design registration within 12 months of publication under certain conditions.
Key Takeaways
Registered shape trade marks and design rights overlap, making it essential to understand their similarities and differences to make an informed choice for your business. Unlike design rights, a shape trade mark:
- distinguishes the shape of your goods from those of your competitors;
- is renewable every 10 years; and
- can already exist in the marketplace.
If you need help registering your IP, our experienced trade mark lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A registered trade mark is a type of intellectual property protection that provides exclusive rights to your trade mark. A shape trade mark is a trade mark that consists of a three-dimensional shape.
Design rights are a type of intellectual property protection that protects the visual appearance of new and distinctive products. ‘Overall visual appearance’ might refer to your design’s shape, colour, configuration or pattern.
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