Many of our clients make use of the Australian Registered Designs system to protect the unique appearance of their products.
The good news is that what constitutes a ‘product’ as defined by the Australian Designs Act 2003 is broad, and includes:
-a thing that is manufactured or handmade;
-a separately made component part of a complex product; and
-a thing that has one or more indefinite dimensions.
Set or Kit
Importantly, the definition of ‘product’ also includes:
-a kit which, when assembled, makes a product
Thus, the individual components of the kit must be designed to be assembled together for design registration to be possible. 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.
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.
However, many items that are sold commercially as ‘kits’ are not kits of the type defined by 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 bank of gaming machines positioned adjacent one another
-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 so 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 individual 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 attempted to argue 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 do not show any connection between the individual machines.
For any queries regarding filing a design application in respect of a kit please contact the writer at davin.merritt@pof.com.au
