Under Australian Designs law, a design, in relation to a product, means the overall appearance of the product, resulting from one or more visual features of the product. A product is a thing that is manufactured or hand made. Thus, registered designs protect the appearance of products as opposed to patents that protect functions or methods, or copyright that protects artistic works.
The visual features that can be protected by a registered design include three dimensional features, such as the shape and configuration of the product, and two dimensional features of pattern and/or surface ornamentation. Under Australian law, there is no requirement that the visual features of a design have to 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 (in that design protection will not extend to a competitor’s product that performs the same function but looks quite different), there is effectively no bar to registrability in Australia even if all of the visual features of a product dictated by its function happen to have a functional purpose or are even dictated by function.
Who can apply for registration of a design?
The owner of a design may apply for the registration of the design.
Typically, the original owner of a design is the person who created the design (the designer), or if the designer created the design in the course of 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, or the first or previous owner.
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 the designer. Establishment and recordal of the correct ownership of a registered design is an important part of protecting a design.
What are the benefits of registering a Design?
An Australian registered design can provide 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 or hiring, and also importation or keeping the product 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, and is suitable for patent protection, registered designs can complement patent protection, for example by providing a right which can be used to restrain copy-cat products which have a similar appearance to the original copied product. Under these circumstances, a registered design will likely be relatively straightforward to enforce compared to a patent, and is often less susceptible to complex arguments that the right is invalid. In some circumstances registered design protection may therefore avoid the need for patent enforcement.
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