Registered designs provide protection for the appearance of products.
For valid registered design protection, the appearance of the product resulting from one or more ‘visual features’ must be new and distinctive compared to previously known designs.
The visual features may include features of the product’s three-dimensional shape (often referred to as ‘shape and configuration’ in designs law) or surface decoration (often referred to as ‘pattern and ornamentation’) or a combination of both.
There is currently no ‘grace period’ for registered designs in Australia. If registered design protection is desired, it is therefore critically important to keep the design strictly confidential until after an application to register the design has been filed. (Some other jurisdictions do have grace periods for designs, for example of six or twelve months, so overseas protection may be available even if the design has been non-confidentially disclosed before an application is filed.)
Limitations of registered design protection
Importantly, a registered design will not generally provide protection for the functional aspects of a product. That is, the protection provided by a registered design will not extend to a competitor’s product that is substantially different in overall appearance to the product illustrated in the registered design, even if that competitor’s product functions in the same way. Protection for new or improved function is more the domain of patents.
Benefits of registered design protection
Most obviously, registered designs can be valuable where the appearance of the product is commercially important.
Registered designs can also provide valuable protection where the appearance of the product is not critical. For example, registered designs can be useful to deter or prevent direct copies from entering the market. It may also be commercially valuable to have a registered design for a product which is the subject of a patent application to provide additional protection of a type different from, but often complementary to, the protection provided by a patent. Registered designs may also provide at least some intellectual property rights in a product where no other form of intellectual property protection is available, and these rights may be licensed or sold (assigned) to others if desired.
Obtaining a registered design in Australia is normally substantially less costly than obtaining a patent.
Some features of Australian design law
Australian design applications proceed to registration after passing a formalities check, and without being substantively examined for newness and distinctiveness of the design. Most Australian registered designs live out their entire ten-year term without being examined, although a registered design cannot be enforced (and should not be asserted) against third parties until it has been examined and ‘certified’ by IP Australia. Examination is voluntary (although it can be requested by third parties) and may be requested any time after registration.
The protection provided by registered designs is highly dependent on the representations (normally drawings, but sometimes photographs or CAD illustrations of the product) which form a critical part of all registered designs. The detail of the representations should be carefully considered before filing an application to register a design. For example, the scope of protection (or even, potentially, whether the illustrated design is validly protectable) may depend on whether, and which, parts of the product are shown in broken lines in the representations.
However, under Australian law (unlike the law in some other jurisdictions) other parts of the design application, and resultant registration, significantly affect the scope of protection. In particular, the product name required in all applications to register designs in Australia, and the content of a ‘Statement of Newness and Distinctiveness’ (which is optional), may have a significant effect on the scope of protection.
These issues should be carefully considered before an application is filed. Merely filing an application using drawings of the product without due consideration of these issues will often fail to obtain good protection.
Overseas design applications
Registered design protection is territorial, meaning that a registered design only provides rights in the territory in which the design is registered. Thus it is necessary to file an application in each country in which design protection is to be pursued. Overseas applications in most countries can claim the ‘priority date’ of first-filed Australian registered design application, provided the overseas application is filed within six months. If overseas applications are to be required, it is useful to take this into account when filing the Australian application. This can allow us to tailor the initial Australian application to provide maximum support for the overseas applications, which often have different legal requirements.
The information set out above is intended to be only a brief introduction to some important features of registered design protection, and should not be considered a basis for commercial decisions. We would be happy to discuss registered designs in more detail.