Understanding the differences in how registered designs are assessed in different jurisdictions is important when seeking design protection. None more apparent are the differences between Australian and New Zealand design law which is important to understand as it can have implications regarding your registered designs in these countries.
A registered design right provides legal protection for the visual appearance of a product.
Can I get a registered design on my product?
Yes – If your design is new and distinctive when compared with the prior art. The prior art includes designs publicly used in Australia, designs published in Australia or overseas and designs disclosed in earlier registrations.
A registered design application must be made before any public product disclosure or commercial use of the product occurs, or else it will be invalid.
Why not use a patent or copyright to protect innovations?
A registered design does not normally provide protection for the function of an article; if functional protection is required, this can only normally be achieved using the patent process. Conversely, a patent cannot protect innovations in the form of improvements to the non-functional appearance of a product; this can only be achieved using the registered design process. You can have both a registered design and a patent for the same product to protect designs in terms of all aspects (i.e. both the appearance and functionality).
Copyright covers all 2-dimensional artistic works and some 3-dimensional artistic works. However, when 3-dimensional artistic works are used commercially (e.g. mass produced), they automatically lose copyright protection. In order to effectively prosecute a party who is using your commercial design, you need a registered design.
Benefits of a registered design
- Registered designs protect designs’ new and distinctive visual features against copying.
- Registered designs can also be used as a defensive measure to prevent a competitor from obtaining legal protection over the appearance of a product by them lodging their own registration. A registered design can provide this defensive position due to the publication of the design on registration by IP Australia. Once published, the registered design becomes prior art for any design application that is filed afterward – this publication is recognised worldwide, so a registered design in Australia will also prevent a competitor from obtaining a valid design registration for an item having the same or a similar appearance overseas.
The registered design process
You can register designs in Australia through a patent attorney very quickly (often in a matter of a few weeks). Prior to filing a design application, black-and-white line drawings of the item showing its unique design from a variety of different aspects (e.g. front, side, top, perspective etc. – as many views as needed to show all the new and distinctive visual features of the design) need to be prepared. The representations are then filed at IP Australia along with details of the owner of the design and the author of the design.
IP Australia then conducts a formalities examination only (no substantive examination of the newness or distinctiveness of the design is conducted prior to registration). If there are no formalities issues in the information supplied or in the representations of the design and the required official fees have been paid, IP Australia officially registers the design and publishes the details of the registration in the Australian Official Journal of Designs. Registration and publication in the Journal occur within a matter of weeks. Upon registration, the design is also made available to be searched by the general public in the Australian Designs Data Searching (ADDS) database.
A design registration remains current for 5 years and then can be renewed once for a further 5-year period for a maximum term of 10 years
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Enforcement of registered design
To obtain an enforceable design right, a Request for Certification of the registered design must be filed with IP Australia. At this time, IP Australia will conduct a substantive examination of the design to determine whether the design is new and distinctive over the prior art. Any person (not just the owner of the design) can file a request to have the registered design certified at any time during the term of the design.
If the design passes this optional examination phase, noting that there is opportunity for your patent attorney to present counter arguments, the design is certified. Certified designs can be used to stop another party from selling products that are substantially similar in overall impression to the certified design.