A design can be described as the way a particular product looks - its visual appearance. For example, it’s shape, or the way a product is packaged.
“Appearance” of a product should not be confused with the product itself or its “function”. The product’s functionality or the way in which it operates is a separate intellectual property (IP) right which can be protected through patents.
It can be the case that a particular product/invention needs both design protection and patent protection.
Given designs do play an important part in a product’s branding, it is important to protect that IP right.
In Australia, IP rights in designs can be protected through a registration and certification process governed by the Designs Act 2013 (Cth).
Application and Registration
There are a number of steps involved:
- Application filing and payment of the Application fee;
- A formalities check is then carried out of the Application by the Designs Office to make sure there are no concerns with the Application;
- If the design passes the formalities check, the design is then registered.
Once registered, the details of the registered owner and the design will be entered on the Register of Designs and searchable.
Rights of Registered Owner
Once registered, the owner will have exclusive rights in that design, including to:
- Manufacture a product utilising the design;
- Commercially use, licence or sell the rights in the design
Enforcing Design Rights
It can occur that a registered design is infringed by someone else, for example, that person may seek to sell a product that incorporates a design identical or substantially similar to your registered design.
In order to take legal action against the “infringer”, the registered design must first be examined and certified by the Design Office.
It is not compulsory for a registered owner of a design to have the design examined. But, in order to obtain legally enforceable rights in the design, the design must be examined to determine its:
- Newness; and
- A request for examination needs to be made to the Design Office; and
- The requisite fee paid.
The Design Office will then assess the design to ascertain whether or not:
“New” means the design has not been publicly used in Australia nor has it been published in a document within or outside Australia.
If a product has already been commercialised in Australia using the design (before the product is examined), then it is likely the examined design will fail the newness test.
There exists another application or registered design substantially similar in overall impression to the design being examined.
If an earlier design application or registration did exist, then the examined design may fail the distinctiveness test.
If the registered design has passed the examination stage, a certificate of examination will be issued by the Designs Office noting the design as certified.
Certification will then allow the design owner to commence legal action against any infringement of the design by someone else.
Application/Registration/Examination Processing Time
Generally, once an application for design registration is lodged, it can take about 3 months for the application to be processed.
If design certification is also requested (which is optional), an additional examination phase of about 3 months applies.
Designs not eligible for Registration
Some designs are statutorily barred from registration. For example, designs which contain certain words, like the word “ANZAC”.
Period of Protection
Registration will protect the design for a period of 5 years from when the application is filed. It can then be renewed for a further period of 5 years. So, a maximum of 10 years.
If a registered design is not renewed, the protection given by the registration will cease. The design then passes into the public domain and will be free for others to use.
There is an initial application fee when the design is lodged. Further fees apply if the design is to be examined. There are also fees if a registered design is later renewed.
International Design Protection
Registration and certification of a design in Australia only protects the design in Australia.
If you are exporting and require design protection overseas, then separate application needs to be made either directly to the overseas country in question or through the centralized process administered by WIPO. Time limits can also apply.
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The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.
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