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.
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.
Contact Actuate IP to learn more.