At Wynnes we can help to prepare your application to register to protect your design and then manage the process with you.
The design features of shape, pattern, configuration and ornamentation applied to the article to form the commercial product can be protected by design registration.
Wynnes can help you identify and protect your IP assets
If you would like Wynnes to help identify your IP, provide options and recommendations, we are happy to discuss your situation with you in person, over the phone, via email or web chat.
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Know what you need to protect
What can you protect to own a technology niche, market position, and unique market presence?
Products that have a unique appearance but may not provide a new function. (Eg: The particular shape of a chair) can be protected by design registration.
Plastic or metal extrusions can be protected. (Eg: Housing guttering, shaped conduit, window and door framing).
Key Proprietary Components
Key components that have a specific shape to fit within a device or apparatus to enable the operation or utility of a device or apparatus can be subject matter for a design. (Eg: The shape of a mating socket for an electrical connection).
Products that have unique pattern or ornamentation can be protected by designs. By way of example, wallpaper patterns, wrapping paper, cartoon characters on bed sheets can be protected with a registered design.
Plants, Industry Specifics and more
Different industries such as services relating to plants or wine have unique requirements. With plants, Plant Breeder Rights (PBR) need to be considered. With wine, the Geographical Indications Act must be taken into account.
Apparatus, Assemblies, Devices, Tools & Widgets
New and inventive machines, apparatus, assemblies, devices and widgets can be protected. Often the method of use or manufacture can be also protected to broaden the scope of protection.
Methods and Processes
Business methods, chemical and biological processes can be protected. Methods and processes where a new result is produced can be considered for patent protection.
Computer hardware and software, functionality associated to produce a new result can often be protected by a patent.
Kits and Parts
Can be protected often as a subgroup of an apparatus or assembly parts are important where it is a key component for an apparatus or device. The part can also be subject matter for a design.
Synthesized Chemicals and Biologicals
Novel compounds, chemical processes (particularly commercial scale processes), purified biologicals, modified biologicals, new biological processes are protectable.
Corporate Name and Logo
Your company’s name and logo are trade marks. Registering these trade marks gives you ownership in respect of your products and services throughout Australia (or other countries).
Slogans, Phrases, Words or Numbers
A memorable slogan or phrase that customers associate with your brand, products, and servicing. (Eg: just do it). New words (Eg: Kodak), unique spelling of a word or alphanumeric combinations (Eg: 7-Eleven).
App Icons and Graphics
Icons and Graphics used for computer software or mobile applications serve as distinctive trade marks and are the distinguishing element that potential users identify with a product or service.
The packaging for a product can often be distinctive in how the product is presented to the customer. The customer associates the packaging with the business and provides a quality value to the product.
Jingles and Sounds
Advertising jingles or a unique sound associated with your brand (Eg: Windows Start Up) can provide an association with your business, products and services.
Shapes and Colours
Overall shape of a product or packaging (Eg: Coca-Cola bottle) or a particular colour associated with your brand, in your industry (Eg: Cadbury purple).
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.