Registering a Design with IP Australia can be a complicated process to navigate. But with the right information, LegalVision may be able to help. Registered designs protect value in the overall appearance of a product. A ‘design’ essentially means the particular shape, configuration, pattern or ornamentation that gives the product a unique appearance. The maximum term of a registered design is 10 years, with a renewal fee payable on the 5th year from filing.

Throughout the process of registering a design, you will need to ask yourself a series of questions to determine whether the design is eligible for registration. There are essentially two stages: the formalities check and the examination.

Formalities Check

Your application must undergo a formalities check to ensure that it is suitable for registration. In relation to formalities, the application form (available on http://www.ipaustralia.gov.au/get-the-right-ip/designs/designs-forms/index.html) must identify the product(s) in relation to which the design is to be registered. The date you file your application becomes the priority date. Accordingly, you will have 6 months to register or publish your design from the priority date.

However, it must be noted that there are circumstances when the design application must be rejected. The Registrar must refuse to register certain designs, including designs for integrated circuit layouts, certain Olympic insignia and any other design proscribed by regulation.

If the Registrar is satisfied that the necessary formalities are met, and that your application is not prohibited due to the above reasons, the design(s) will proceed to registration. Registration essentially means that your design will be advertised and registered in the Australian Official Journal of Designs, and can be searched in the Australian Designs Data Searching (ADDS) database. This process usually takes a few weeks.

Examination

Any person may request an examination after your design has been registered. The Registrar may also undergo an examination based on its own initiative where it must determine whether there is a ground for revocation, including whether the design is a registrable design.

Is your design registrable?

There are a number of criteria that needs to be satisfied for your design to be registrable. They essentially fall into two categories: those going to the definition of design and those going to newness and distinctiveness. Each category will be detailed in turn.

Is it a design?

A design is defined as “the overall appearance of the product resulting from one or more of the visual features of the product”. At this stage, you should be asking yourself: What is a product and what is a visual feature? A product is something that is handmade or manufactured. In other words, it excludes naturally occurring substances. A visual feature is the shape, configuration, pattern and ornamentation of a product. Therefore, the ‘feel’ of the product is not considered a visual feature. Simply put, if it relates to both a product and visual feature as defined above, it is a design.

Is it new?

Next, you need to consider whether your product is new and distinctive. Your design will be consider ‘new’ if it is not similar to another design from the prior art base. Prior art base is any design that has already been registered or publicly used in Australia or anywhere else. It is strongly recommended that you seek legal advise as to determining whether your design is ‘new’ as this process requires high technical skill and experience.

Is it distinctive?

Distinctiveness means that your design is not similar in the overall impression of a person who is familiar with the product to which the design relates, to any design that has already been registered or used publicly. For example, if you were looking to register a design for chocolate that has used similar features to that of the purple Cadbury packaging, it cannot be so similar that a consumer would mistakenly think that your product was Cadbury.

Conclusion

If your design satisfies all the categories above, your product will most likely be eligible for registration and protected under Intellectual Property Law. When dealing with registering a design, it is best to seek legal advice from a specialist IP lawyer. This will ensure your product is properly protected by design law, giving you legitimate legal standing if infringements do occur.

If you would like to discuss your situation with one of our specialist IP lawyers, please complete the form or give us a call. We will then assess your needs free of charge and provide a fixed-fee quote if relevant.

 

 

Sources:

Lachlan McKnight

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