Registered designs
A registered design protects how a product looks, regardless of how it works. Think bottles, car parts and headphones. These products are commonplace, but their specific appearance can be crucial to protect against copying.
Cooper IP has had the privilege of partnering with Lexology to produce Australia’s 2022 guide to design protection. A simplified version of the guide is below, along with other FAQs.
The basics
What can be protected by a registered design right?
An Australian registered design protects the visual appearance of a product arising from its shape, configuration, pattern and ornamentation.
Registered design rights can protect a wide range of products, from containers and packaging to household goods and toys, from electronic devices and jewellery to FMCGs to lighting equipment.
Design registrations may even cover to graphical user interfaces, textiles and logos.
Can I go public before applying to register my design?
Publicly disclosing your design to others, even if by accident, can thwart your ability to protect your design. If in doubt, keep your design a secret and ask your patent attorney for advice.
That said, Australia’s Designs legislation will soon be amended to include a grace period to protect designers against their own disclosures made in the 12 months prior to filing a design application. We will update the news page of our website with this information once we learn more.
How much does registered design cost?
The official fee for filing an Australian design application is currently $250.
Applicants can expect attorney fees of $700 to $1,200 for filing a design application with a single design.
What is the difference between a registered design and a patent?
A registered design protects the appearance of a product, regardless of how it works. In contrast, a patent protects inventions and how they work, regardless of how they look.
In short: registered designs protect appearance; patents protect functionality.
Pre-filing questions to ask
Who can apply for and own a registered design?
The applicant or owner of an Australian registered design can be:
- the designer;
- a person who contracted the designer to create the design;
- the employer of the designer;
- an assignee of the designer or someone who derives title through devolution by will or operation of law; or
- the legal personal representative of a deceased person mentioned above.
How long does a registered design last?
Australian registered designs enjoy an initial five-year term which can be extended for a further five years upon payment of a renewal fee.
However, analogous design rights overseas can enjoy even long periods of protection.
Can I apply for an international registered design?
Much like patent and trade mark rights, registered design rights are territorial. There is no such thing as an “international registered design right”; instead, you must apply to protect your design in each country of interest.
Can I include multiple designs in one application?
In Australia, only one design is allowed per design application (unless the application is for a common design applied to different products) and this is enforced quite strictly.
An application having more than one design will be objected to and may be overcome by:
- withdrawing the additional design(s);
- excluding the additional design(s) from the application and filing them in one or more new applications; and
- combining the filings into a multiple application and paying additional official fees.
Is my design protectable?
Your patent attorney can advise on the registrability of your design.
Generally speaking, a design is protectable in Australia if it is new and distinctive when compared the prior art base (i.e. everything in the public domain before the day you applied for protection).
- A design is new unless it is identical to a design that forms part of the prior art base for the design.
- A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
The design application process
How do I apply for a registered design?
The application process starts with filing a set of visual representations depicting your product with the Australian Designs Office.
It is crucial to get the representations right at filing and it can be worth hiring a qualified design illustrator to prepare your representations. After all, registered designs are all about protecting the appearance of a product; you must ensure your representations not only accurately depict your product, but are also broad enough to capture infringers.
For example, optional or variable visual features ought to be shown using appropriate drawing conventions, otherwise it can be easy for third parties to work around your design registration.
For a more detailed look at the design application process, click here.
What happens after filing?
After a design application is filed, it undergoes a relatively straightforward formalities check, during which the design application is classified according to the product(s) depicted.
Consideration is also given to whether the application contains one or more designs.
If no issues are raised during the formalities check (or all issues are overcome), the design application proceeds to registration, and voila, you have a registered design.
It typically takes about three months from filing before a design is registered.
Should I have my design registration examined?
Before a design registration can be enforced, it must be examined and certified (i.e. considered new and distinctive).
That said, requesting examination and overcoming examination issues costs money, and these costs need not be incurred if they can be avoided.
It is common to simply hold a design registration as a defensive measure which is typically enough to keep competitors at bay. However, if infringement is detected, then you will have the option to request examination and certification of your design so that it may be enforced against the infringer.
Examination is optional and can be requested any time during the term of a design registration. Examination typically occurs within three months of it being requested, and any issues raised during examination generally must be overcome within six months.
The commercial value of registered designs
How are registered designs relevant to my business?
The appearance of most products must be appealing to attract customers.
Design drives consumer choice and the appearance of a product can determine whether a customer chooses one product over another. In other words, the success of a product may hinge, at least partially, on how it looks.
Getting the look of products right can be crucial for SMEs, and protecting that look can be crucial to keep competitors at bay.
Why should I register my designs?
Exclusive rights
Registering your design provides you with exclusive rights for a maximum of 10 years in Australia, so as to prevent or stop third parties from copying and diluting your marketshare.
Defining a brand
Product design can be an important element of a company’s branding and how it is perceived in the marketplace. Apple has over 800 Australian registered designs covering its various electronic devices, from its distinctive mouse and keyboards, to its various phones and tablets.
Opportunity to license or sell
A registered is a business asset that can be be sold or licensed to others and thus can act as a source of income.
What happens if I don't register my design?
Without a registered design, you will not enjoy exclusive rights to your design and competitors may thus copy the appearance of your product without your permission.
In other words, if a third party decides to copy your design, you will have no legal means to stop them.
Moreover, it is likely that the copies of your product will be sold at a lower prices, since copycats have not spent on the design creation process and thus need not recoup any investment in the creative process. This would reduce your market share and may even harm the reputation of your business and products, especially if the copycat products are of a lesser quality but look just like yours.