Design relates to what makes a product look the way it does in terms of visual features and characteristics. By registering your design, you will obtain a design right which is intended to give designers exclusive rights to commercially use, licence or sell the design.
What is a Design Right and how is it different to other types of intellectual property?
A design right relates to the overall appearance of a product resulting from one or more visual features of the product. It gives an exclusive right to designers to commercially use, licence or sell the registered design.
A design right is therefore distinguishable from other types of intellectual property as it only relates to how it is designed, not how it works:
- Patents are designed to protect the rights of an inventor in relation to their new and inventive and/or innovative device, substance, process or method;
- Trademarks are designed to distinguish the source of their goods or services from those of another; and
- Copyright is generally considered to be a bundle of rights in creative works such as books or television broadcasts.
What are the benefits of registering a design?
Australia does not have a concept of an unregistered design right which means that if your design is not registered, you will end up having to rely upon the common law to protect your design and enforce your rights. However, relying on the common law is notoriously time-consuming and expensive and difficult to prove. Therefore, registering your design is the most efficient and effective method to ensure that you can enforce your rights. Furthermore, if an individual or corporation is found to have copied your design, they will be put on notice that the registered designer has rights in the design.
What designs can be registered?
Designs are defined by legislation to be the visual features of a product. Products in this context means things that are handmade or manufactured or components of a complex product. Importantly, the design must relate to its visual features. This mean it excludes non-visual features such as the feel of a product, the materials used in a product.
For a design to be registered, you must be able to demonstrate that the design is new and distinctive when compared to prior art base for the design as it existed at the date of filing your application.
We strongly suggest seeking legal advice to ensure that your design meets all of these requirements.
How do I apply for a design right?
All applications for a design to be registered in Australia must be filed with IP Australia which is the governing body which administers and grants design and other intellectual property rights.
The application process
Before you apply, it is important to ensure that your design is new and distinctive as these are the requirements for it to be legally enforceable and certified. This means that you cannot publicise the design as disclosure of the design will cause your application to fail on the grounds that it is not ‘new’. You must also determine that you are the owner of the design.
If the design has been made by two or more people, the design application must be filed jointly.
You must also ensure that the design does not already exist which can be done in the Australian design search system. This step will assist you in determining whether your design will meet the new and distinctive threshold.
Once you are satisfied that your design is new and distinctive, you will need to prepare drawings or images for your application. It is important that these are accurate and of good quality to show the visual features of the design.
When you submit your application, IP Australia will undertake a formalities check to ensure that they have sufficient information in order to determine an outcome. Once it is filed, you are able to then request for registration if they have sufficient information for your application. You can only request this within the first six months from your filing date. If IP Australia does not have sufficient information, they will provide you with a notice listing the information that they require.
While design rights are considered to be a separate type of intellectual property, they will often overlap with copyright. When this happens, matters do get complicated and often the assistance and guidance from a legal professional is required. Applications for design rights themselves have greater success when they are drafted correctly and comprehensively.
We here at GLG Legal understand the importance of getting your design application right. We take the time to understand your design and interests so that we can draft a design application to its highest standard.