What is Designs Protection?
Design registration protects the visual appearance of a product, not its function. Think for example everything from containers and product packaging to electronic devices, jewellery, and hardware tools. Design drives consumer choice and the appearance of a product can determine whether a customer chooses one product over another. Therefore, while these products might be commonplace, their appearance must be appealing to attract customers. The success of a product may hinge, at least partially, on how it looks and therefore it can be crucial to use designs to protect its specific appearance.
Examples of designs include graphic designs, patterns, consumer products such as children’s toys or home appliances, three- dimensional product shapes, two-dimensional ornamentation (e.g. stylised logos), packaging, or digital media products, such as computer game characters and computer icons.
A product’s design features can become a core asset with monetary value. By way of example, Apple’s range of “I” products display distinctive designs that distinguish their products from other players, mobile phones or tablets on the market.
Designs can sometimes be used to complement patent and trade mark protection, but in some instances, it is the only form of protection available to new innovations and designs.
Design protection comprises the following two characteristics:
Visual appeal: Design protection covers the aesthetic aspect of a product, not its functionality. This means a unique product shape can be protected, but not its innovative function.
Originality: Your design must be new and distinctive, setting a higher bar for uniqueness.
Design registration costs are relatively low, and the application process relatively quick (typically less than 6 months), so registered designs are well-suited to manufacturers seeking protection for products that have a short product life and are quick to be released onto the market.
Under Australian law, there is no requirement that the visual features of a design must be aesthetically appealing or have eye appeal, so functional designs can be registered. Although a registered design does not protect the functionality of a product, there is effectively no bar to registrability in Australia, even if the visual features of a product have a functional purpose.
Design Registration In Australia
Who can apply for registration of a design?
The owner of a design may apply for the registration of the design.
Typically, the original or first owner of a design is the person who created the design (the designer). If the designer created the design in the course of their employment, then the employer may be the first owner of the design. A person may also become the owner of a design by a written assignment from the designer.
A person who contracts with a person, e.g. a graphic artist, to design a design for them does not automatically acquire ownership of the design. Instead, ownership of the design will likely vest in the designer until it is specifically assigned to the person who instructed or commissioned the designer. Ensuring an applicant for a design has ownership of the design is an important part of designs protection.
Benefits of registering a Design
Design registration gives the owner a monopoly on their product design for a limited period to stop others from making, using or selling a product to which the design has been applied.
A key advantage of design protection is that it protects a design owner against the use of a similar design by another party, regardless of their intent to copy. This offers a robust level of protection that covers unintentional copying of a design. Thus, designs protection through registered designs ensures the rightful entitlement to economic benefits, as well as recognition.
An Australian registered design provides the owner with the exclusive right, in Australia, to commercialise a product which embodies a design that is identical to, or substantially similar in overall impression to, the registered design. The exclusive right includes the manufacture, sale, use, and importation of a product incorporating the registered design for commercial purposes.
Registered design protection can provide a useful enforceable right where no other registered IP right is available. For example, if you have designed a product with a new and commercially valuable appearance, that appearance can be protected by a registered design. If the product does not have functional benefits over earlier products, it may not be protectable by patent protection.
Further, even where a product has new functional features capable of patent protection, registered designs can complement patent protection, for example by providing a right which can be used to restrain copied products which have a similar appearance to the original product. Often a registered design may be easier to enforce than a patent.
The law around design registration can be complex. There are decisions to make about which designs can and should be registered, which elements of a design should be protected, and the countries in which the design should be protected. Our specialist design attorneys are leading experts in designs and can guide you through this complicated area of law.
