What is a design?

A design refers to the overall appearance of a product resulting from one or more visual features of the product. These features may include:

A ‘product’ is something that is manufactured or hand made. A component part of a complex product is also considered a product in its own right. Design registration does not protect how a product 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.

Why would I want a registered 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.
  • 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 (IP) 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.
  • 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.
  • Scandalous designs.

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. xxxx’. 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.

Designs and copyright overlap

There are a number of instances where design law overlaps with other areas of IP law, such as copyright. 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 it is important to appreciate that, in many instances, copyright is no longer infringed once the design has been industrially applied.

Designs and patents overlap

A design registration protects the appearance of a product. 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.