What is a design?

A design refers to the features that establish the unique overall  appearance of a product—its shape, configuration, pattern and  ornamentation.
A registered design provides the owner with the exclusive right to that  design in the marketplace in respect of the product category for which  it is registered. A design registration lasts for 10 years.

What types of design can be protected?

You can protect just about any type of product as long as the design is  both new and distinctive. The product that the design has been applied  to must be specified in your application. Registration will only protect  your design when applied to that product (or classes of similar  products). For example, a design for a chair will be protected against  others applying design the same or similar in overall impression to  another chair.

To determine whether a design is new and distinctive, it is compared  with the ‘prior art base’, which includes designs published anywhere in  the world. A design will pass this test if an identical or substantially  similar design in ‘overall impression’ does not exist in the public  domain. As with patents, it is important that the design is not publicly  disclosed before you apply for design protection. Unlike with patents,  there is no grace period and you will not be able to obtain design  protection if it is disclosed publicly prior to making a design  application.
Each product category varies, and consideration is given to the nature  of the product and the scope for design within that category. This is  assessed by a review of prior designs worldwide and use of similar  designs in Australia.

Design/Copyright Overlap

There is some overlap between design protection and copyright protection.  If your design is two-dimensional it may qualify for protection under  both the Designs Act and the Copyright Act. However, if your design is  three-dimensional you may lose the benefit of copyright protection if it  has been industrially applied. An exception to this loss of copyright  protection is where the copyright work is considered a ‘work of artistic  craftsmanship’. It is important to ensure the right strategy is in  place so that you can maintain your ability to seek design registration,  particularly if copyright protection is likely to be lost due to the  design/copyright overlap.

How do I protect a design?

You can register a design  to protect the overall appearance of a product, but this does not  protect how the product functions. If the functionality of the product  is sufficiently novel it may be prudent to seek patent protection as well.
Dual design and patent protection applications are not uncommon. Also,  dual design and trade mark protection is often sought. Trade marks can  also protect the shape of a product, however the criteria for obtaining  shape mark protection differs from design protection. See the trade mark registration page for more information.

A design application  (and a patent application) must be filed prior to the design being  publicly disclosed. For this reason it is recommended that you discuss  your design requirements with us as early as possible during the  development phase.

Why seek design protection?

Your product’s appearance can be as vital a marketing asset as your brand name.
Design registration under the Designs Act 2003  provides you with the right to prevent an unauthorised party from  adopting a substantially similar design, thereby protecting your  commercial interests.

Registered designs are placed on the Designs Register,  which is a publicly available database. Anyone can search the register  prior to manufacturing a product, so having your design listed will act  as an effective deterrent to potential infringers.

How can Actuate IP assist?

Actuate IP's design practitioners provide an expert, tailored approach to assist with the implementation of design strategies for businesses.

We can advise on a range of design-related issues including design searches, Australian and international design registration and design management services.

We can draft design contracts and agreements to protect your IP, as well as representing you if necessary in any design disputes.

Contact Actuate IP to learn more.