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Designs

ANY MANUFACTURED PRODUCT CAN BE PROTECTED. A DESIGN REGISTRATION CAN BE DIRECTED TO THE 3D FEATURES (SHAPE AND CONFIGURATION) OR 2D FEATURES (PATTERN OR ORNAMENTATION) OF A PRODUCT.

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WHAT IS A REGISTERED DESIGN?

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A registered design protects the look or appearance of a product. It does not protect how the product works although in some cases these are related.

An example is the design of a door handle. The design registration does not protect the mechanism of how this product works. The design registration will only protect the appearance of the product.

A designs needs to be “new” and “distinctive” to be registrable. The comparison is made against ‘prior art’ designs – those that are publicly available prior to the design application filing date. To be “new”, a design must not be identical to a prior art design. To be “distinctive”, the design must not be “substantially similar in overall impression” to a prior art design.

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WHAT KIND OF DESIGNS CAN BE PROTECTED?

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Any manufactured product can be protected. A design registration can be directed to the 3D features (shape and configuration) or 2D features (pattern or ornamentation) of a product.

Examples: Design applications filed for products such as chairs, lamps, cars, bottles can be directed to the 3D shape features of such products.

Design applications for products such as scarves, shirts and textiles can be directed to the 2D pattern or ornamentation of such products.

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WHAT IS A STATEMENT OF NEWNESS AND DISTINCTIVENESS?

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Australian design applications allow for the inclusion of this Statement which can be directed to the features claimed by the applicant to be new and distinctive. When assessing registrability or infringement of the design, the features claimed in the Statement can be given more weight. The Statement can thus be of importance and must be drafted properly.

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HOW EFFECTIVE IS A DESIGN REGISTRATION? WHAT DOES A DESIGN REGISTRATION COVER?

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Design registrations are very effective in deterring copy products. Although they are of a limited scope compared to patents, design registrations provide an additional layer of protection to patent applications.

In many cases, we recommend both a patent application and a design application. A design registration is relatively easy and cheap to obtain, and will provide a 10 year protection period for the design. This is particularly handy if protection for an idea via a patent application may be difficult to obtain due to possible obviousness issues.

Design registrations are used by many multinational companies to protect their designs, such as drink bottles, shavers and vehicle shapes.

Is it true a copier only needs to change 5% to 10% to avoid infringement? This is a common misconception. The potentially infringing design is compared to the design registration to assess if they are substantially similar in overall impression, taking into account their similarities, the new features of the design registration compared to the prior art and the features claimed in the Statement of Newness and Distinctiveness. The comparison is performed on a case by case basis and there is no set formula that determines infringement or not.

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SHOULD I REGISTER MY DESIGN? WHAT ARE THE BENEFITS OF A DESIGN REGISTRATION?

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Yes, there are many benefits to registering your design, including:

Exclusive right to use your registered design.

  • Exclusive right to authorise other people to use your registered design – The design registration is intellectual property (IP) and you can license its use to others for a fee.
  • Exclusive right to authorise other people to use your registered design – The design registration is intellectual property (IP) and you can license its use to others for a fee.
  • Personal property which can be transferred or sold – your IP has a value and can be transferred to family or sold to others. A registration that covers the whole of Australia.
  • Deters copiers – will force potential copiers to come up with their own design.

Having a design registration is a relatively inexpensive way to achieve the above benefits.

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IS MY DESIGN COVERED BY COPYRIGHT? WHAT IS THE DIFFERENCE BETWEEN COPYRIGHT AND DESIGNS?

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No. In simple terms, copyright relates to automatic protection of artistic works – painting, sculptures, drawings, music, film, etc. A drawing of your product is protected by copyright. However, once you ‘industrialise’ (i.e. mass produce/manufacture) the product, copyright protection no longer applies to the product. You need a design registration to protect the appearance of the product.

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WHEN DO I HAVE TO FILE A DESIGN APPLICATION?

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Before you disclose the design to any member of the public. There is no grace period for Australian designs, so it is important not to disclose the design before filing a design application.

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HOW LONG DOES A DESIGN REGISTRATION LAST?

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The initial design registration has a life of 5 years. It is then extendable by an additional 5 years by payment of a renewal fee, giving a maximum term of 10 years.

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HOW DO I FILE A DESIGN APPLICATION?

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Give us a call or send us an email to mail@protectmyidea.com.au and send us drawings of the product you wish to protect.

We will then assess your product to determine if a design application is appropriate and how we can broaden the scope of your design registration.

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CAN I FILE A DESIGN APPLICATION MYSELF?

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Technically, yes.

Like with most things however, you need to know what you are doing and the possible pitfalls and mistakes you can make by doing it yourself. These include:

  • Is the product name you will be using appropriate? There are consequences to filing a design application with an inappropriate product name.
  • Are the design drawings you will be filing unnecessarily too narrow? Are there ways you can broaden the scope of the design you are filing?

Are you filing a Statement of Newness and Distinctiveness?
Once a design application is filed, only very minor changes are allowed. Thus, it is important that a design application be filed properly from the outset.

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WHY FILE A DESIGN APPLICATION WITH US? WHY CHOOSE US?

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  • Expert Professional Advice –we have 15+ years of experience in filing design applications for many different products. Although design applications can be simple and straightforward, there are ways to draft the design application to broaden the scope of the resulting registration.
  • Personal service – you can talk to us on the phone at anytime about your application. Many clients call us for just one or two questions that come to mind. These services are never charged to you. If a question requires a more substantive analysis and search, we will advise you of the cost for providing such service and obtain your cost approval before proceeding. If we are not available to take your call, please leave us a message or send us an email. We aim to provide same day service and will return your call as soon as we can. Otherwise, we aim to answer within 24 hours.
  • Lower fixed costs – our costs for each step is fixed, and the costs from start to finish will be outlined to you. Our costs are lower than those of the bigger firms.
  • Streamlining your application – our aim for your application is to broaden its scope as well as minimising any possible blocks to registration. We aim for the process to be as clear and straightforward as possible for you.

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IS THE DESIGN REGISTRATION INTERNATIONAL? HOW DO I OBTAIN A DESIGN REGISTRATION OVERSEAS?

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An Australian design application and registration is effective in Australia only.

Design registrations for the most part are on a country basis. Corresponding national applications in overseas countries can be filed. These foreign applications must be filed within 6 months of the Australian application filing date to be entitled to that filing date and thus preserve the novelty of the design overseas.

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THE AUSTRALIAN DESIGN APPLICATION PROCESS

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1. Registered design application.

2. Formalities examination: After about 1 to 2 months, the design application will go through a formalities examination only, meaning a quick check that the applicant filed what appears to be proper drawings and the correct fee. Once these minor requirements are confirmed, the design will be registered and published. If there are any formalities issues, the applicant will be provided an opportunity to address them. If your design application is prepared by a patent attorney, it is unlikely that any such formalities objections will be raised.

Guaranteed design registration: As a design application is not required to undergo a substantive examination (for newness and distinctiveness) before being granted, it is essentially guaranteed that the design registration will be granted, and in a relatively rapid manner. However, it is very important to note that the granted design registration cannot be enforced at this stage against a potential infringer.

Publication of a design registration: One of the possible disadvantages of a design registration is that design will be published when granted, which happens shortly after filing the application.

How do I enforce a design registration? A request for examination must be filed and the design registration must pass the test for newness and distinctiveness in order for the design registration to be “certified”. Once certified, the design registration can be legally enforced.

Examination is optional: Examination of a design registration is optional and does not have to be requested. It is thus possible to have a granted design registration, for you to mark your products with the design registration number and receive its deterrent effect against copiers, and not have to request examination of the design registration throughout its 10 year term if there are no potential infringers of your design registration.

3. Renewal fee: The initial design registration has a life of 5 years. It is then extendable by an additional 5 years by payment of a renewal fee, giving a maximum term of 10 years.

4. Requesting Examination (OPTIONAL): At any time after grant of the design registration, examination can be requested to place the design registration into an enforceable state as described above.

6. Examination: If there are objections, an examination report usually issues after months. The applicant will then be given a period of 2 months to overcome the objections.

8. Certification: If the design registration passes examination, a Certificate of Examination will issue and the design registration will be enforceable.

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DESIGN INFRINGEMENT

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Enforcing a design registration – if you think someone is infringing your design registration, give us a call. We will assess the issue and can assist you in enforcing your registration. We recommend you do not approach the other party directly. An unjustified threat of infringement is an offence and we need to establish first that the other party is in fact infringing.

Defending you from a design infringement allegation – if you receive a letter advising you that you are infringing a registered design, do not panic. Give us a call to discuss the issue. We have defended many clients in similar situations in the past. In most cases, we can refute or challenge the allegations and politely but sternly tell the other party to withdraw their threats.

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Legal Disclaimer

The information provided in this website is for general information purpose only and is not intended as legal advice. Your specific circumstances will determine whether the information provided applies to you. Please contact us for any questions or clarifications.

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