National Legal Hotline
7am to midnight, 7 days
Call our lawyers NOW or,
have our lawyers CALL YOU
Design Rights and Registration in Australia
Registration of design rights in Australia is a means by which designers might protect their intellectual property.
The law relating to design rights is found in the Designs Act 2003 (Cth) (‘Designs Act’). Under this Act, a design is registrable and capable of protection if it is ‘new and distinctive when compared with the prior art base for the design’ as it exists before a design application or application for protection has been filed (‘the priority date’). The Designs Act Regulations 2004 (Cth) may provide for a different priority date; however, the most common priority date is the date of the design application.
As defined in section 5 of the Designs Act, ‘design’ refers to the ‘overall appearance of the product resulting from one or more visual features of the product’. The visual features (under section 7) relate to, for example, the object’s pattern, ornamentation, configuration or shape. The Act provides that this may cover functional aspects of the design. However, it is important to note that a design may not be registered merely to protect the new functional aspects of the design; the design would still need to meet the other requirements needed to be registrable, namely the requirement that it is new as well as distinctive.
For example, if a designer were to create a new type of zipper for a blouse, and the designer wanted to protect the design of the zipper, the design would not be the zipper but the blouse itself, taking into account all aesthetic features of the blouse. Even if the blouse was capable of registration, it will not protect the specific elements of the design such as the zipper, but the blouse in its entirety as a design.
Put simply, a ‘product’ is anything that has been manufactured or made by hand.
One of the most important definitions to understand is the meaning of ‘overall appearance’. The visual appeal is what differentiates a design from a mere generic product. What designs registration seeks to protect is the ‘overall appearance of the product’ and not the product itself.
For example, design registration protects the particular shape, pattern and cut of a shirt as it appears as a whole, as opposed to protecting just a ‘shirt’.
Under section 15(2) of the Designs Act, the ‘prior art base’ for a design may be:
- designs publicly used in Australia; and
- designs published in a document whether within or outside of Australia; and
- certain designs disclosed in a design application (that have not yet been publicly disclosed).
If the design relates to a shirt, the prior art base would primarily be shirt designs that have been disclosed within or outside Australia.
What is ‘new and distinctive?’
The concepts of ‘newness’ and ‘distinctiveness’ in relation to design rights are defined under section 16 of the Designs Act. The Act basically provides that a design:
- is new unless ‘identical’ to a design of the prior art base; and
- is distinctive unless ‘substantially similar in overall impression’ to another design of the prior art base.
If the design is for a new shirt, the shirt itself would have to be substantially new and distinct from all other shirts within and outside Australia. This creates a threshold that is quite high for certain types of designs, such as those that pertain to the fashion industry where imitation to a certain extent is common.
Anyone can search the Australian Designs Register by navigating to the Australian Government IP Australia website.
Once a design is registered, protection is afforded for 5 years with an option for a further 5 years if the registration is renewed. However, the current registration system under the Designs Act does not provide a legally enforceable right even where a design is registered. For a designer to obtain an enforceable right that will allow them to protect their design from infringement, they must also have the design examined and certified. The process can be of significant cost to the designer, especially for those with multiple designs, as each application must be made separately. A choice must be made by the designer as to whether there will be any benefit of registering their design.
When coming to a decision, some factors a designer may consider include:
- the duration of market trends within the industry (how long the design will be popular/relevant)
- the type of design and profit margin (whether the cost of registration and certification will outweigh the profits obtained from sale of the design), and
- the number of items intended to be sold and distributed.
A supplier of a specific garment design that manufactures on a small scale may not benefit from registration; the costs of registration and certification would likely exceed the profits gained from sale and distribution and by the time certification is obtained (if it is obtained), the item may no longer be popular in the market.
Once a design is registered and certified, this will provide a legally enforceable right of protection for the designer. If anyone copies the registered design, the designer may commence an infringement action against the alleged infringer. However, litigation is costly and may not provide the designer with the desired outcome. Even if a designer is successful they may come off second best due to the costs and time spent in litigating the matter. The protection afforded often suits large scale manufacturers, or designers who experience long-life market trends (where the long term profits far exceed the costs of registration and certification).
When making a design application, the designer can elect to either register their design, which will allow for certification, or elect to have the design published. The benefit of publication is that although no positive rights are afforded, the publication may act as a barrier for others seeking registration of a similar design. This may give the designer a competitive edge at a cheaper cost.
More information on the designs system and registration process can be found on the IP Australia website.
This article reflects the state of the law as at 16 May 2016. It is intended to be of a general nature only and does not constitute legal advice. If you require legal assistance, please telephone 1300 636 846 or request a consultation at gotocourt.wpengine.com.