If the appearance of your product is unique, it may be worth protecting with a registered design. Design registration protects the overall appearance of a product and can also act as a deterrent to others who might want to copy and commercialise a product with a similar appearance. A registered design can also be a good alternative for protecting a product where a patent is unavailable or not warranted. This fact sheet provides a practical overview of Designs in Australia, including what can be registered, why registration matters and how the application process works.
What is a design?
A design refers to the overall visual appearance of a product created by one or more of its visual features, such as its shape, configuration, pattern or ornamentation. A ‘product’ may be manufactured or handmade, and can extend to include a component part of a more complex product which is considered a product in its own right. Design registration protects the appearance of a product –not the way it is made, what it is made from, or how it functions or performs.
What is a registered design?
A registered design is a design that has been reviewed by the Designs Office and has been officially registered. The Australian Designs Office in Canberra, a division of IP Australia, is the responsible authority for registering designs.
Any person may apply to register a design, but there are restrictions as to who may be ultimately registered as the owner of the design. The owner may be the designer, their employer, the person who contracted them to make the design, or a person who has been or is entitled to be assigned the design. There may be more than one owner of the registered design.
What are the benefits of registering a design?
As the owner of an Australian registered design, you will have the exclusive monopoly right to stop others making, selling, importing or otherwise using or exploiting the product that embodies the design. The registration lasts for five years and is renewable for a further five years.
Registration provides the exclusive right to:
- make the product in Australia;
- import the product into Australia;
- sell, hire or otherwise dispose of the product in Australia;
- use the product in Australia;
- keep the product in Australia; and
- authorise others to do any of the above.
For many organisations, an important reason for pursuing design registration is to add value to the product. For example, most investors, venture capitalists, prospective partners or licensees will want to know that appropriate and effective intellectual property protection is in place or being sought for a product.
You can only enforce your rights for your registered design once it has been certified.
What can and cannot be a registered design?
In order for a design to be registered, it must meet the following two criteria:
- it must be new (i.e. not identical to a design publicly used in Australia or published in a document anywhere in the world); and
- it must be distinctive (i.e. not substantially similar in overall impression to another design publicly used in Australia or published in a document anywhere in the world).
Some designs cannot be registered, for example:
- designs for medals;
- designs including the word ANZAC;
- designs including the Arms, flag or seal of the Commonwealth or of a state or territory;
- Australian currency; and.
- scandalous designs.
Why is it important to conduct design searches?
Whether you are launching a new product, keeping tabs on a competitor, or you just want to know if your idea is new, design searching is a great way to secure your competitive advantage. There are many search options depending on your commercial objectives and budget.
Research and investigations experts can provide IPresearch and searching services, including design searching and watching.
Search services for designs include:
- Newness and distinctiveness investigations – These searches are typically conducted for clients who believe they have a design that is registrable. The search will identify other design registrations (prior art) that an attorney can compare against the design to assess if it is registrable.
- Validity investigations – These generally start with an existing design registration and look for prior art that may impact the validity of the design.
- Infringement investigations – These start with a product and search for any existing design registrations the product would (or may) infringe.
- Landscape searches – These searches are used to identify what research work is being done in a particular technology, and who is conducting it. The search can also cover the developing and changing nature of designs. Such searches may assist with decisions about the direction future R&D should take.
- Name investigations – These are searches of design literature conducted in specific names. Name searches are often conducted to determine whether a company has IP protection in relation to a particular product.
- Due diligence investigations – These are searches of IP portfolios to determine the current legal situation of the identified IP. They are often used in mergers, acquisitions, licensing arrangements or initial public offering matters.
- Documents provision – We provide copies of documents including design registrations, patent specifications, human or machine translations of patent specifications, patent file histories, journal articles, standards, and almost any document that is required by a client.
- Watches – We provide regular, periodic watches of specific IP rights, competitors and technology fields to assist clients in keeping abreast of developments that may impact on their business.
What happens in the design filing process?
Filing a design application is the first step of the design registration process. This would typically be handled by an experienced patent attorney. Seeking protection early will help minimise the risk of a competitor registering a similar product and securing an earlier filing date. It is important to ensure that the design is not publicly disclosed prior to filing a design application, as prior disclosure will likely invalidate the application.
Based on the particulars of your product, an attorney with the highest level of technical knowledge related to your invention should be assigned. The attorney will guide you through the registration process and manage your application in all countries where protection is sought.
Once you have lodged your application, it will undergo a formalities check at the Designs Office. If there are no issues with the application, you will be granted a registered design. Occasionally the Design Office will reject the application and issue a ‘formalities report’ and you will have two months to re-submit the application.
Should this occur, we recommend using an attorney to deal directly with the Designs Office on your behalf and make any necessary revisions to the application within the set time frame.
Filing a design application is the first step of the design registration process. This would typically be handled by an experienced patent attorney. Seeking protection early will help minimise the risk of a competitor registering a similar product and securing an earlier filing date. It is important to ensure that the design is not publicly disclosed prior to filing a design application, as prior disclosure will likely invalidate the application.
Based on the particulars of your product, an attorney with the highest level of technical knowledge related to your invention should be assigned. The attorney will guide you through the registration process and manage your application in all countries where protection is sought.
Once you have lodged your application, it will undergo a formalities check at the Designs Office. If there are no issues with the application, you will be granted a registered design. Occasionally the Design Office will reject the application and issue a ‘formalities report’ and you will have two months to re-submit the application.
Should this occur, we recommend using an attorney to deal directly with the Designs Office on your behalf and make any necessary revisions to the application within the set time frame.
What is the difference between design registration and certification?
Registration and certification occur at different stages of the process, and afford the owner different rights.
- Registration – Registration will protect your design for five years from the date the application was filed and can be renewed for a further five years. Registration will give the owner protection for the visual appearance of the product and the exclusive rights to commercially use, license or sell the design.
- Certification – Certification is the optional next step after registration. Once your design has been registered, you must request examination by IP Australia if you wish to pursue an alleged infringer of your design registration. To be certified, a design must be new and distinctive. If the examination is successful, you will receive a Certificate of Examination and you will have the legal right to take action against anyone else who infringes your design. You can only take action after your design is certified.
How do I ‘mark’ my registered design?
We recommend that once you have a registered design, you mark the product with the correct wording (e.g. ‘Australian Registered Design No. XXX’). Such notices will minimise innocent infringement of your registered design.
How do I protect my design in other countries?
Registration under the Australian Designs Act 2003 only protects the design in Australia. If protection is required in other countries, separate applications must be filed.
Under the International Convention for the Protection of Industrial Property, an applicant in Australia can claim the Australian filing date as the priority date in any ‘convention’ country. If the applicant wishes to do this, the foreign design applications must be filed within six months of filing of the Australian design application. This six month period gives an applicant time to test the commercial viability of the design in those other countries before committing to the expense of filing foreign design applications.
A single registration may be obtained to cover the 27 countries in the European Community.
How do designs overlap with other intellectual property?
There are a number of instances where design law overlaps with other areas of intellectual property law, such as patents and copyright.
If protection is required for the manner in which the product works, the way in which a product is constructed, or particular ways in which a product is used, then patent protection should be considered. Some products are suitable for protection by way of both patent and design registration.
In Australia, copyright is an automatic form of protection which exists in most original artistic, literary, musical and various other types of works as soon as they are created. The copyright owner is entitled to stop others from unauthorised reproduction, publication, broadcasts and various other acts in relation to the work.
Some registered designs are also protected by copyright, although in many instances, copyright is no longer infringed once the design has been industrially applied.
Conclusion
Design registration is an important step in protecting the visual appearance of a product and preserving the commercial value of the innovation behind it. By securing exclusive rights in the design, businesses can deter copying, strengthen their market position and create an asset that supports investment, licensing and broader commercialisation.
Our attorneys have a thorough understanding of all aspects of design law and copyright – offering a full range of services associated with these areas from registrations, searching, drawing, through to litigation, licensing and enforcement.
We welcome the opportunity to work closely with you to ensure your unique design is protected and your commercial objectives are met.
