We would like to remind all of our clients on the potential value provided by the Australian design registration system, which allows the unique appearance of a product to be protected for a period of up to ten years.
The process for obtaining an Australian design registration is a relatively straight forward and fast process, with registration typically occurring within four to six weeks of the application filing date. The speed of registration compares favourably with that involved in securing an Australian granted patent, which can take several years.
An Australian design registration can also be used as the basis for pursuing design registrations overseas by virtue of the Paris Convention, which allows overseas applications to be filed at any time within six months of the initial filing date of an Australian design application, and to be back dated to the Australian filing date. This provides a useful way of delaying the costs incurred in pursuing design protection overseas (albeit only for a maximum of six months).
Design registration can be used to protect the unique appearance of a wide range of 2D and 3D products. It’s available irrespective of whether the product is manufactured or hand made.
Electronic screen displays are registrable as designs
One topical area regarding suitability for design registration is that of electronic screen displays. In more recent years, screen displays have come to distinguish competing electronic devices (e.g. mobile phones in the marketplace), and are of considerable commercial importance. For this reason, large numbers of design applications are filed around the world in respect of screen displays and the like.
Screen displays are now deemed suitable subject matter for Australian design registrations following a change in practice in the Designs Office in mid-2013. This is no doubt good news for many of our clients, particularly those in the electronics industry.
To qualify as suitable subject matter, Australian design applications must include the words ‘Screen Display’ in the application title, and ensure that a dotted line is shown around the screen. It is important to note that these requirements differ from those of foreign design registration systems.
The advent of 3D printing increases the likelihood of a competitor quickly reproducing a product, simply by scanning and reproducing an original product or, where available, downloading an electronic file relating to the product and then reproducing the product from the file.
The design registration system provides a particularly effective mechanism for pursuing unauthorised copies produced by 3D printing. If you are concerned that your products may be susceptible to reproduction by using 3D printing technologies, please contact us to discuss whether design registration may provide you with suitable protection to counter this.
File a design application before disclosing or commercialising your product
It is important to bear in mind that a valid Australian design application may be filed only where the product in question has remained confidential up until the priority date. Any prior publication of a product anywhere in the world (including online), or any prior use of the design in Australia is likely to invalidate a subsequently filed Australian design application. This requirement differs from that of many other countries, where a valid design application may be filed even if the product has already been publicly disclosed or commercialised.
If you have any questions or would like further advice in respect of Australian and New Zealand designs law, please contact the head of POF’s designs team, Davin Merritt.