Intellectual property law: protecting your designs

What is a design?

The Designs Act 2003 (Cth) (the Act) defines a design as “in relation to a product, 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 handmade”.

A “visual feature” of a product includes the shape, configuration, pattern, and ornamentation of the product.

A design is a registrable design if it is new and distinctive when compared to the “prior art base” for the design. “Prior art base” includes designs which are:

• publicly used in Australia;
• published in a document inside or outside of Australia; and
• disclosed in a design application.

A design is considered new unless it is identical to a design that forms part of the prior art base for the design. It is considered distinctive “unless it is substantially similar in overall impression”.

The difference between design and trademark protections

Trademark and design rights can protect certain characteristics of products.

Trademark registration may be used to protect a brand name or symbol, whereas a design registration may be used to protect the overall visual appearance of a product, including its shape and colour.

Further, a trademark registration may be indefinite, whereas a design can be registered for a maximum of 10 years.

What is a design registration?

The registered owner of a registered design has the exclusive right during the registration term to:

• make or offer to make a product which embodies the registered design;
• import such a product into Australia for sale, or for use in any trade or business;
• sell, hire, or otherwise dispose of, or offer to sell, hire, or otherwise dispose of, such a product, or keep it for those purposes;
• use such a product in any way in any trade or business, or keep it for that purpose; and
• authorise another person to take any of the above actions.

These rights are considered personal property and can be assigned to another person.

The rights may be registered on the Personal Property Securities Register (link).

An initial design registration lasts for five years, and a renewal for another five years.

Registration may be surrendered or revoked.

Design rights do not protect characteristics such as how a product works, its size or the materials used to make it.

Who is eligible to register a design?

A person who can register a design includes:

• the designer;
• a person who contracted the designer to create it;
• a person who derives title to it by operation of law, such as under a will; and
• a legal representative the people named above if they have died.

More than one person can be the owner of a registered design.

If there are two or more registered owners, each of them is entitled to an equal, undivided share in the exclusive rights to the registered design.

Each may exercise the rights to their own benefit without accounting to the other owners but may not grant a licence to exercise the rights, or assign an interest in the design, without the consent of the others.

Rejected designs

A design application must be refused in some circumstances, such as when the design is prescribed by regulations (such as bank notes), if it resembles the Olympic symbol, or if it relates to an electrical integrated circuit.

Design infringement

A person infringes a registered design if they, without permission from the owner:

• make or offer to make a product which embodies the registered design;
• import such a product into Australia for sale, or for use in any trade or business;
• sell, hire, or otherwise dispose of, or offer to sell, hire, or otherwise dispose of, such a product;
• use such a product in any way in any trade or business, or keep it for that purpose; or
• keep such a product for doing any of the above things.

Infringement proceedings must be brought within six years of the alleged infringement.

Examination

An examination of a design is conducted to decide whether a ground for revocation exists.

Proceedings may not be brought until the design has been examined and an examination certificate issued.

An examination may be conducted on request by a person, by court order, or on the registrar’s own initiative.

Remedies

Relief available from a court includes an injunction, damages, or an account of profits. Damages may be refused or reduced if a defendant was not aware the design was registered or could not reasonably have been expected to be aware or took all reasonable steps to find out whether the design was registered.

How Gibbs Wright Litigation Lawyers can help

Contact Gibbs Wright Lawyers today to discuss your intellectual property rights and design matters in a confidential consultation.