A design registration is a legal document which confers on an author of the design, or a person claiming rights from the author of the design, a monopoly for a limited time to make, use, hire or sell the design.
A design registration protects the overall appearance of a product and, in particular, it protects the visual features including the shape, configuration, pattern or ornamentation of the product. It is important to note that design registrations do not protect the function of an article, and an article that functions in the same way as a registered.
In order to obtain registration of a design it is necessary that the design be new and distinctive. This means that your design must not be identical to a design that has been publicly used in Australia, or a design that has been published anywhere in the world, or substantially similar in overall impression to such a design.
Therefore, a design must be kept confidential before a design application is filed at the Designs Office. Any non-confidential disclosure of the design (such as by an oral presentation, printed publication, offer for sale or public use of the design) before the filing date of an application to register the design will invalidate any design registration granted on the application.
A search can be conducted in order to check that a design is new and/or does not conflict with or infringe any existing design rights.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing overseas design applications, or before the development or marketing of the design.
File a design application
Design registrations are granted on applications filed at IP Australia, which incorporates the Designs Office.
The application must include an application form and representations showing the design. The representations may be drawings or photographs.
In certain situations, a design application can include more than one design.
Registration
A design application firstly undergoes a formalities examination, at the successful conclusion of which the design is registered. A registered design is not enforceable until the registration has been examined and certified by the Designs Office.
Publication
As an alternative to registration, an applicant may choose to have his/her design published. Publication of a design establishes no rights in the design for its owner, but puts the design on the public record and effectively prevents anyone else from obtaining design rights in the design, or designs that are substantially similar in overall impression to the published design.
Examination
Examination of design registrations is not compulsory. However a registration is not enforceable until the registration has been examined and certified by the Designs Office.
Applicants have the option of requesting examination at any time after the design has undergone the formalities examination. Additionally, third parties can request examination and lodge prior art material.
An examiner of designs will review the application and may conduct a search to check whether the design is new and distinctive. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the application.
Term of a design registration
The initial term of a design registration expires five years from the filing date of the design application in which the design was first disclosed. The registration can be renewed upon payment of a renewal fee to a maximum term of 10 years from its filing date.
Most countries are members of an international convention which allows overseas design applications to claim the benefit of the filing date of an Australian design application, provided they are filed within six months of the Australian application.
It may still be possible to file overseas design applications after the six month date without claiming the benefit of the Australian filing date, provided there has been no disclosure of the design. However, now that designs are registered and published without examination, it is likely that the design will be published within one to two months of filing.
A design registration allows the owner of the design registration to prevent others from using or commercially dealing in the design, or a design that is substantially similar in overall impression to the registered design.
In the event that infringement of a registered design is occurring, the owner of the design may obtain legal relief to stop the infringement and to claim damages or an account of profits. As mentioned above, legal relief can only be obtained after the registration has been examined and certified by the Designs Office.
There is an exemption from infringement known as the 'spare parts' exemption. This exemption relates to designs that are used in repairing products made up of two or more parts, if the use is to restore the overall appearance of the product.
The design registration can be assigned or licensed to others in return for a royalty payment to the owner of the design.
If you need help with your design registration, then please contact us for further assistance.
