Industrial Design Protection in Australia & Globally

A registered design is an Intellectual Property right that protects the overall appearance of a product. Registration ensures competitors do not copy this appearance, and so secures the commercial value of your product design. Elements that define the design of a product include the shape, configuration, pattern and ornamentation. The design of a product is a key aspect that can determine its commercial success. Examples of designs that can be protected are:

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- Tech products

- Medical devices

- Furniture

- Fashion

• A registered Design protects the appearance of a product.
• Design registration prohibits competitors from copying your product design, giving you the exclusive right to commercialise it.

A Design right can protect products that are:

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1. In a physical and tangible form

2. Manufactured or handmade

3. Produced on a commercial scale

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A Design right will not protect:

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• designs without a physical form, e.g. computer graphics, type fonts

• mere concepts or ideas

• partial design features of your product

• the way in which your product works i.e. how it functions

• the materials or size of your product

• the brand name or logo you have developed for your product

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To successfully protect your Design, it must be new and distinctive. In order to determine whether a Design is new and distinctive, it is compared to the Prior Art Base which includes all previously publicised designs worldwide. The test of comparison focuses on the similarities of the designs rather than the differences. The relevant tests for newness and distinctiveness are:

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1. For a Design to be new it must not be identical to any design previously disclosed anywhere in the world.

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2. For a Design to be distinctive it must not be substantially similar in overall impression to any design previously disclosed anywhere in the world

• Designs must be new and distinctive, in tangible form and produced on a commercial scale.

The Design registration process can be difficult to navigate, and various formalities must be met in order to successfully register a Design. For example, the so-called 'representations' (images of the product) should show the product from various different angles and should not show any matter that does not form part of the Design.

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Depending on the jurisdiction, you may be able to show environmental structure in dotted lines to give better context. In some jurisdictions, the Trademarks Office will register your Design at face value, meaning that the examiner will only complete a formality check without checking whether your Design is valid (i.e. new and distinctive). These jurisdictions include e.g. Australia, the European Union, and China.

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Other jurisdictions, for example, the United States, will only grant you Design rights once the examiner is satisfied that your Design is indeed new and distinctive. In Australia, a Design owner must get the registered Design certified (examined for newness and distinctiveness) before taking legal action.

• Design registration requires representations in accordance with the national formality requirements.

The cost to register a Design is approximately A$ 1,250 per Design and jurisdiction, including professional and government fees. Hence, only new and distinctive product designs of commercial value should be registered.

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You should consider protecting your Design in all jurisdictions where you will either sell or manufacture your new product. It is important to note that there will be further costs to enforce your Design rights in case of infringement. However, a Design registration is a strong deterrent for competitors to copy your product designs.

• Only commercially valuable product designs should be registered.
• Design registration is a strong deterrent for competitors to copy your product designs.

In Australia, a Design right can be registered for a maximum of 10 years. The initial registration lasts for 5 years. You may renew the Design registration for further 5 years once. The renewal must be requested and paid for before the initial registration period expires.

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Once a Design right has ceased, it will become public domain which means you will no longer have exclusive use of the Design.

• Design registration offers a limited period of exclusivity.
• Once a Design right ceases, it will become public domain.

Whilst Design rights protect the visual appearance of your product, Trade Marks are aimed at distinguishing your goods and services from those of your competitors in the marketplace.

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Trade Marks do not need to be products in a physical form. Common types of Trade Marks include brand names, logos, letters, numbers, phrases, shapes, colours, and any combination of these elements.

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Whilst Trade Marks can already exist in the marketplace before being registered, Designs must be new and distinctive at the time of filing and cannot already exist in order to be protected.

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Finally, Trade Marks can effectively last forever if they are used and renewed on a continual basis. In contrast, registered Design have a fixed period of exclusivity, after which the Design right will cease, and you will no longer have exclusive use of the Design.

• Designs protect the appearance of a product, whereas Trade Marks are badges of origin.
• Trade Marks can last forever, whereas registered Design have a fixed period of exclusivity.

A registered Design is a national IP right and does not give you protection overseas. If you plan to sell or manufacture your product in another country, you should consider protecting your Design there.

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In most cases, you will have to apply for a Design right in your country of interest directly, and each country/ jurisdiction has its own legal requirements and terms of protection. Because of the different formality requirements, it is essential to prepare the Design representations (product images) in the correct format and style for each country/ jurisdiction before filing or otherwise disclosing your new product design.

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We work with professional draftsmen who can assist in preparing digital images or computer models of the product design in accordance with the respective style requirements. This crucial step will avoid formality objections which may put your Design rights at risk.

• Design protection should be considered for all countries where the product will be sold or manufactured.
• Each country/ jurisdiction has its own legal requirements and terms of protection.