The design features of shape, pattern, configuration and ornamentation applied to the article to form the commercial product can be protected by design registration.
At Wynnes we can help to prepare your application to register to protect your design and then manage the process with you.
Read below to find out more about:
- What is a Design?
- Articles excluded from Design Protection
- Requirements for Obtaining a Design Registration
- Filing a Design Application for Registration
- Third Party Notification of Relevant Material
- Overlap between Design and Copyright
What is a Design?
The design of an article (of manufacture) may contribute to the commercial success of the product. The design features of shape, pattern, configuration and ornamentation applied to the article to form the commercial product can be protected by design registration.
Design registration is one form of intellectual property which can be used to protect industrial designs.
Design registration protects the overall appearance of a product. In Australia design registration can protect the design features of aesthetic articles and functional articles. However a method of manufacture, the use of a particular material or a method of achieving an end cannot be protected by design registration.
Articles Excluded from Design Protection
The Designs Act excludes certain articles from design protection. These articles include those which have a primarily artistic or literary character such as book jackets, calendars, maps, post cards, and greeting cards.
Requirements for Obtaining a Design Registration
To be registrable, a design must be new and distinctive. “New” means the design has not been publicly used in Australia or published in a document within or outside of Australia before the priority date of the design application. Please note that a design would not be considered new if it had been published on the internet before the priority date. A design is distinctive unless it is substantially similar in overall impression to a design that has been publicly used in Australia or published in a document within or outside of Australia before the priority date of the design application.
Please note that a person can destroy the newness of their own design by inadvertently or purposely disclosing their design before a design application has been filed with the Australian Designs Office. A design application should therefore be filed before there is any publication or the product is released into the market place.
Filing a Design Application for Registration
A design application includes a formal request and a set of representations or drawings showing the design to be protected. Representations are usually line drawings on A4 paper.
The formal request includes a definition of the articles which are covered by the design. It also contains a statement of monopoly, which is analogous to a patent claim, stating the design features for which a monopoly is claimed.
Under the Design Act 2003, a design application must request either registration or publication at the time of filing or within six (6) months of the priority date. Failure to meet this requirement will result in lapsing of the application. With registration, the design’s office performs a formalities check and if the requirements are met is registered and advertised in the Official Journal of Designs. In order to obtain enforceable rights the owner must request examination and gain acceptance and subsequent certification of the registered design. On the other hand, the option of publication does not lead the owner to obtain any enforceable rights but prevents others from obtaining rights to the design.
The registered design has an initial term of five (5) years from the filing date and can be renewed for a further five (5) years for a total of ten years.
Third Party Notification of Relevant Material
The Designs Act 2003, provides a mechanism by which a person may provide the registrar with relevant information that they believe will affect the validity of the registered design.
Overlap between Design and Copyright
The Copyright Act confers copyright protection in Australia on all original artistic works and works of artistic craftsmanship. This is so whether or not the work is made inside or outside of Australia. Artistic works cover two dimensional aesthetic paintings and sketches as well as engineering drawings for articles of manufacture.
If a copyright owner decides to industrially apply a design on an article based on the owner’s original artistic work, then an application may be made to register the design providing it is deemed to be a new design otherwise they must file a design application before the artistic work is published. Design registration is necessary as copyright protection is lost with industrial application of the corresponding design and sale of at least two of the subsequent articles.
However two dimensional designs with features of pattern or ornamentation applied to a surface of an article are excluded from the definition of a corresponding design and therefore enjoy copyright protection irrespective of whether there is industrial application or not.