Many of our clients make use of the Australian Designs system to protect the unique appearance of their products.
What constitutes a ‘product’ as defined by the Australian Designs Act 2003 is broad, and includes:
- a thing that is manufactured or hand made;
- a separately made component part of a complex product; and
- a thing that has one or more indefinite dimensions
Set or Kit
Of note is that the definition of ‘product’ extends to kits which, when assembled, make a product. This can be important in assisting design registration owners enforce their rights against a competitor selling copies of a registered kit of components, which are later assembled by a purchaser of the kit. In such a scenario, design registration for the kit of components provides a means to prevent the competitor from selling the kits, rather than having to separately pursue each individual purchaser of the competitor’s kit.
The individual components of a kit must be designed to be assembled together for design registration to be possible. An example of a ‘kit’ that is registrable as a design is a model airplane kit, since the individual components are assembled together (via a snap-fit connection and/or glue) to form a model airplane, which is a product and therefore registrable. If the individual kit components are not able to be assembled together to create the end product, then design protection for the kit is not possible.
Not Registrable as Kits
Many items that are marketed and sold commercially as ‘kits’ are not considered kits in the context of the Designs Act, and so are not registrable as designs. Examples of commercially available ‘kits’ (or sets) that are not registrable as designs include:
- a vehicle body kit
- a first aid kit
- a pair of swing doors
- a set of vehicle or trailer lights
- a dining setting
In each of the above examples, the individual components making up the overall product are not assembled together and are not registrable for this reason.
In such instances, individual components may be registrable as separate designs, although this may necessitate filing multiple applications to individually protect each component.
IP Australia’s current stance on kit applications is summarised in their 2021 Decision to refuse an attempt by Aristocrat Technologies to obtain design registration for ‘a bank of gaming machines’. The application was refused initially during the pre-registration formalities stage and again at a Hearing because the application representations showed the four individual gaming machines spaced apart from each other, with none of the machines shown as being connected together.
Aristocrat unsuccessfully argued that each of the four gaming machines were, in fact, connected together by way of electronic connections hidden from view and not shown in the representations. However, the Delegate dismissed this argument, at least on the basis that the representations clearly did not show any connection between the individual machines.
In light of the above, our recommendation when filing an Australian design application for a kit is for the filed representations to show a physical connection between the individual components of the kit.
Registration for a Kit Doesn’t Separately Protect Individual Kit Components
One final issue of note when pursuing registration for a kit – registration for a kit of components protects the kit as a whole. It doesn’t also separately protect the individual components of the kit. If protection is desired for one or more components of the kit, then protection for those components should be separately pursued at the same time as pursuing protection for the kit.
For any queries regarding filing a design application in respect of a kit please contact Davin Merritt.
