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 2021 guide to design protection. A simplified version of the guide is below, along with other FAQs.

The basics

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.

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.

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.

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

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.

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.

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.

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.
 
However, certain other countries do allow for the protecting of multiple designs in a single design application.

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

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.

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.

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

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.

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.

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.