Sometimes looks are everything
The design of products manufactured in three-dimensions, such as industrial or domestic goods can be protected by a Registered Design. Registered Designs protect how a product looks including features of shape, configuration, pattern or ornamentation. Some two-dimensional designs such as those appearing on wallpaper and textiles can also be registered. Design registration is intended to protect Designs which have an industrial or commercial use.
Although Designs are a separate category of registered protection, they very much need to be considered as part of your intellectual property strategy. Design registration protection is cheap and quick to obtain compared to patent protection so it can be a useful alternative or supplement to patent protection. Further, in the context of mass produced articles where Copyright / Design overlap applies, Designs may be the only available form of protection.
Unlike some other countries, Australia does not have an unregistered design right. However, even if a Design is not registered, action might still be taken to protect the goodwill and reputation a trader has acquired by the distinctive shape and configuration of a product. This activity may constitute common law passing off or contravene the Australian Consumer Law.
In Australia, someone who commissions the creation of an industrial design will be the owner of the design for the purposes of filing an application to register the Design. However, Copyright in the design will remain with the creator unless agreed otherwise.
The process usually commences with an application to register a design in Australia. Provided a foreign application is filed within six months of the Australian application a Design owner can claim convention priority from the Australian application to enjoy the Australian filing (priority) date.
Australian Design applications are initially only examined to check for formalities. If they are in order, the Design will proceed to registration and publication. Examination of the merit of an Australian Design application is optional.
However, Australian registered Designs cannot be enforced until they have been examined on their merits and certified. In order to certify the Design, IP Australia must examine it and determine that it is a new and distinctive design.
Once examined and certified by IP Australia, a registered Design confers the owner exclusive rights to commercially use it, licence or sell it.
Copyright / Design overlap
Australia has unique law in relation to the Copyright / Design overlap when a two dimensional design is embodied in a three dimensional work. If the three dimensional work is mass produced, meaning 50 or more copies are made and sold, Copyright protection may be lost. If Design Registration protection is not sought before public disclosure of the design then the designer will have no rights to protect against copying. This is not the case in New Zealand where copyright can subsist in a design that has been industrially applied.
The term of Design Registration protection in Australia is 10 years. For Copyright, protection lasts for the terms of the author’s entire life + 70 years. Unlike other forms of IP, with copyright, the author doesn’t need to take steps such as registration in order to obtain Copyright protection. Given that protection can be unwittingly lost and given that protection can be enhanced through other IP regimes, you need to consider your position at the outset. We can help you with the mental gymnastics to understand the complex Copyright / Design overlap in Australia.
The duration of protection for registered Designs differs from country to country. In Australia, the term of protection is 10 years, in the United States of America and New Zealand the term is 15 years, in Europe the term is 25 years.
If a third party copies, imports, sells or uses a registered design for the purpose of trade in Australia, then this may constitute infringement of a registered Design.
As lawyers we are very experienced in asserting and enforcing Registered Designs and in handling claims for common law passing off and under the Australian Consumer Law.
Gestalt Design Services:
- Strategic advice on whether registered design protection is possible, appropriate and / or desirable.
- Clear advice on the complex copyright / design overlap.
- Searching (registrability of Design and freedom to market searching)Registration of design applications in Australia and overseas.
- Assessment of validity and infringement of registered designs.
- Registered design infringement action including enforcement and defence.
- Design re-examination and revocation proceedings.
- Commercialisation of registered designs.