What is a design?
A design is concerned with the overall visual appearance or features of an article resulting from one or more visual features. These may be features of shape, configuration, pattern or ornamentation of the product which impart a unique look. These features may be two-dimensional such as patterns applied to a surface or three dimensional such as the or form or configuration of an article. Certain elements of a product aren’t not regarded as visual features, such as the feel, the materials used and where a product has one or more indefinite dimensions, the indefinite dimension or any repeating pattern on it. A product for this purpose can be either manufactured or handmade.
What type of products can be protected by designs registration?
Designs registration is a form of intellectual property protection which applies to a wide range of goods and products ranging from fashion clothing and accesseories to bathroom and kitchen decor items, electronic goods, household and industrial equipment, mobile phones, cars, spare parts and sports clothing and products
The registration process
There are several options available under the Designs Act 2003 (Cth) for the registration of a design. An application may contain a single design relating to one product or several products, or multiple designs in relation to one product or several products providing all products belong to the same classification category. (Locarno Agreement Class.)
The person/s applying for the design must comply with minimal formalities set out in the Designs Regulations 2004 , such as specifying the number of designs they are applying for in their application and the corresponding product/s to which each relate, which facilitates the search of registered and/or published designs by reference to their Locarno class. A representation, whether an illustration, drawing, photo or digital image or sample must provide different views of the design so as to depict an accurate and complete portrayal. When the design application is registrered, the details and representations are included in the Australian Official Journal of designs . whilst the representations can be viewed on ADDS. The Application is merely checked for compliance with formalities, and substantive examinations prior to grant have been eliminated. Substantive examinations now only occur at the request of the owner, a third party, Court or at the Registrar’s request. The applicant must request either registration or publication of each design as at the filing date or within six months, subject to some limited exceptions. If this request is not made the application will lapse.
What rights does the owner obtain?
The rights granted to the registered owner include the right to make, sell, hire or import the product in relation to which the design is registered. A registration is property which can be assigned, or licensed their interest in relation to the whole of a design or part or in respect of a particular place. Any assignment to be effective and valid must be in writing signed by both the Assignor and Assignee. Designs registration enables the owner to protect the visual features of their designs, however the protection conferred doesn’t extend to either the function or composition of a design. Unlike the Patents system which grants rights to inventors to products and processes that have a specific use or function, designs registration is not focused on how products are constructed or how they function. The designs regime protects the visual appearance of mass-manufactured products. The design isn’t the article itself, rather the visual features applied to the article. Industrial designers and manufacturers are entitled to prohibit their design from being copied. The fact that some of the design aspects happen to also be functional won’t mean a design isn’t entitled to registration. It follows that a competitor is permitted to copy functional aspects of a registered design but cannot copy it’s visual appearance.
How do you file an application for a design?
The designs registration system is administered by the Designs Office in IP Australia, headed by the Registrar of Designs who maintains a Designs Register. All designs which have been registered in Australia since 1973 and images contained in applications for designs filed since 1985 can be searched online. It is recommended that you conduct a thorough search of existing and registered designs to ensure the design you are applying for is new and distinctive. It is recommended that a thorough search be undertaken of existing registered designs to ensure the design applied for is ‘new’ and ‘distinctive’ compared with the prior art base as at the priority date of the application. This also minimises the risk of you inadvertently infringing another designer’s rights in a design. ‘New’ means the design isn’t identical to a design that has been publicly used in Australia or published in a document in Australia or abroad.
Therefore if you have already disclosed your design by exhibiting it, selling it, putting it into a catalogue or displaying it on a website, you may lose your right to register it as it may not be considered to be new or distinctive. A design is ‘distinctive’ unless it is substantially similar in overall appearance to other designs forming part of the prior art base. In evaluating substantial similarity more weight is ascribed to the similarities embodied in a design than the differences. There is an alternative to the registration process called publication which doesn’t give you any rights in the design, but allows you to preclude others from obtaining certification of a similar design. It costs approximately $200 per design to publish a design.
How long does design protection last?
The term of protection is five years from the filing date, renewal for a further five year period.
The owner may bring infringement proceedings against a party they believe has infringed their design only having obtaind an examination and having their design certified. At this point it is open to a defendant to counterclaim for revocation of the registration. The Designs Act recognises two forms of infringement, primary and secondary, primary infringement occurring where a person makes a product which is identical or substantially similar in overall impression to the registered design, secondary infringement in relation to the importation, selling or hiring of the product.
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