A product’s unique overall appearance - visual shape, configuration, pattern and ornamentation can be protected with design registration. In contrast to patents, registering a design is not concerned with the way a product functions but merely its overall appearance.

A registered design provides the owner with the exclusive right to that design in the marketplace. A design registration lasts for a 10 year term. Without design registration, preventing another trader from adopting a similar if not identical design can often be very difficult.

A design application can be lodged to cover a number of scenarios:

• A single design for a single type of product
• A single design common to multiple product types
• Several designs for a single type of product 
• Several designs for multiple similar products.

Registering a design in Australia

A design registration search is generally recommended as a first step in the design registration process to determine if the design can qualify for registration.  Ideally, an infringement (or clearance) search is also recommended to ensure that your use of the design does not infringe the prior registered rights of another.

A design application is then made with IP Australia. There are a number of formality requirements which must be met when making an application. Though not compulsory, a Statement of Newness and Distinctiveness is recommend to be included with the application. It assists in defining the innovative aspect of the design and can also have other legal implications regarding the design.

Upon filing, IP Australia conducts a formalities examination, ensuring all required information has been provided. If the application satisfies this formalities check, it will be registered and published (together with the provided representations of the design) in the Australian Official Journal of Designs and on the Designs Register. A Certificate of registration will also be issued.

It is important to note that a registered design does not provide legally enforceable rights against a suspected infringer. To obtain enforceable rights, examination must be sought and the design must be certified. Upon request, IP Australia will examine the registered design to determine whether it satisfies the requirements of being “new and distinctive”.  If this “new and distinctive” requirement is met along with all other criteria, the design will be certified, at which point it is recognised as a legally enforceable right which can be utilised in infringement proceedings.

Registering a design internationally

Design registration sought with IP Australia is jurisdictional - it only provides protection within Australia. There are a number of options and strategies when considering seeking protection overseas. There is no “worldwide design registration” and, aside from Europe, design registration will need to be obtained separately in each country of interest.

Australia is a member of the Paris Convention, enabling a corresponding design application to be made in member countries within 6 months of the Australian filing.  This allows additional time to determine which countries are of commercial interest before filing the design applications in each country. Further, where the application is made within 6 months of the Australian filing, each overseas application will gain the benefit of obtaining design protection from the earlier filing date of the Australian application.
The Community Design Registration however enables a party to seek design registration in all EU member countries under a single application, saving significant administrative time and expense.

There are many strategic, practical and legal considerations when implementing an international design registration strategy, particularly given that the design applications must be filed prior to any public disclosure. Actuate IP can provids an assessment of your options and costings to do so.

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