Registered design
'Design' is the overall appearance of a product. Design results from 1 or more visual features, including shape, configuration, pattern and ornamentation. When the visual features are applied to a product, they give it a unique appearance.
Designs must be registered to be protected. Upon registration, the owner of the design will have the exclusive right to apply the design to the product for which it is registered. Registered designs protect the way things look rather than their functionality.
Some examples of registered designs are:
- the shape of the Coca-Cola bottle
- the pattern on a football jumper
- the shape of the Holden Monaro car.
The purpose of design protection
The objective of the Designs Act 2003 (Cwlth) is to protect the unique visual appearance of a product. The Act also aims to give the owner exclusive rights to apply the design to mass-produced goods for a limited time. These exclusive rights encourage creativity and innovation and give the community a range of new products that are visually appealing and may also have improved function or safety.
Duration of design protection
The initial period of registration lasts for 5 years from the date of filing. The initial 5-year period can be extended by a further 5 years for a total of 10 years protection. If you do not renew your registration it will cease. A design may only be registered for a maximum of 10 years from the date of filing.
Protection offered by design registration
Design registration only protects the visual appearance of your product. It does not protect what the product is made from or how it works (the materials and function can be protected by patents). It does not protect the functionality of a product.
Although a registered design protects the visual appearance of a product, there is no requirement for the design to be aesthetically or artistically attractive, only new and distinctive.
Requirements for design registration
A large number of different items can be registered as designs, including domestic, commercial or industrial products.
A design needs to be both visually new and distinctive.
'New' means that the identical design, or one very similar, has not been:
- publicly used in Australia
- published in a document anywhere in the world (i.e. any documentary disclosure, including the internet)
- disclosed in a design application with an earlier priority date.
To be 'distinctive' a design must not be:
- substantially similar in overall appearance to other designs that are already publicly used in Australia
- published anywhere in the world
- disclosed in an earlier design application.
Minor or insignificant changes do not make your design distinctive. It must give an impression of being not 'the same or substantially similar' to any existing design.
If you are considering seeking design registration for a product, you should keep it confidential and not permit third parties to see it being used prior to lodging the application.
Searching registered designs
It's important that you conduct a search of the current design applications and registrations before applying for registration. This will help you to determine whether your design is both new and distinctive.
Australian Design Search (ADS), through IP Australia, allows you to search free for design applications and registered designs.
You can also consult the Australian Official Journal of Designs, updated fortnightly.
Registering a design
Design registration is obtained through IP Australia.
Once you file an application for a design, with the appropriate application fees and forms, the application will be given a priority date (generally this will be the date you file the application), a filing date and application number. Within 6 months of the priority date, you must request either registration or publication. If you do not, your application will lapse.
If you choose 'registration', your design will be advertised in the Australian Official Journal of Designs and made available for searching in the ADS database. As the registered owner, you will be entitled to certain exclusive rights. You can also ask for your registered design to be examined and certified to make it legally enforceable.
If you choose 'publication', your design will be published in the Australian Official Journal of Designs and in the ADS database.
While publishing will not give you any rights, it will prevent others from gaining any rights to the design.
Rights of registered design owners
As a registered design owner, you have:
- the sole right to use and exploit that design by applying it to any product
- the sole right to license others to use the design
- the right to assign or partially assign the ownership of the design to someone else
- the right to take action to stop other people using the design (only enforceable after the examination and certification of the design).
Overlap of design registration and copyright
In certain limited circumstances, some works may be protected by both copyright and design registration. For example, 2-dimensional designs that are applied to the surface of an article, such as linen and wallpapers, retain copyright protection, and design protection can be obtained if desired. Also, buildings or models of buildings are capable of both copyright and design protection.
However, it is not possible to have dual copyright and design protection for the majority of other artistic works. In most cases, if the design is registered or the 'corresponding design' (the application of the artistic work to the product) is 'applied industrially' (50 or more articles are produced and sold) to a product, the copyright protection in the artistic work will be lost.
This is a complex area so it is important to seek advice from a patent attorney or IP lawyer or specialist.
Overlap of design registration and patents
As design rights apply only to the visual appearance of a product, design registration would not prevent a competitor creating a similar product that performs the same function but looks different. The function of a product is better protected by a patent. Patents protect the way things work and may prevent a competitor from copying the functional aspects of your innovative design. If the relevant requirements are met, a product can be protected by both a registered design for visual appearance and a patent for novel and inventive function.
Also consider...
- Learn more about registering designs from IP Australia, including about designs, the application process, searching for a design, applying for a design, and renewing your design.