Own your look, protect the visual appearance of your product for up to 10 years.
A Registered Design protects the visual appearance of a product…..its ‘looks’.
A Design provides you with the exclusive rights to prevent others from producing a product which looks the same or substantially similar.
The Designs Office grants you these exclusive rights for a period of time (10 years in Australia) as a ‘reward’ for your creative appearance of your product.
You should therefore treat your Registered Design as a ‘commercial tool’, to prevent others from making a product which looks substantially similar to your product.
Whilst Design Registration can be a very powerful form of protection, you should additionally consider obtaining patent protection for your product if it functions differently to pre-existing products. Design protection cannot typically be used to prevent someone making a product which works the same way but which looks different in appearance.
Some product designs can also be registered as Trade Marks, where the appearance of the product may indicate the trade source of the product, for example, the shape of the “Caramello Koala’ chocolate bar.
PREPARING THE DRAWINGS
To file an application for a Registered Design, representations of the product are needed. These may be photos of the product, however, it is preferable to have black line drawings of the product.
The drawings or photos should show different views so that all the aesthetic features of the product are visible.
The drawing or photos should show the final form of the product you intend to make, sell or use. It is not generally possible to modify the appearance of the representations after the design application is filed at the Designs Office.
GETTING THE DESIGN 'REGISTERED'
Shortly after the Application is filed, the Designs Office will conduct a ‘formalities examination’ to check that all documentation and other information is in order. The Design will then be ‘Registered’.
The Design is Registered for a maximum period of 10 years, subject to the payment of a ‘renewal fee’ at the 5th year.
Although “Registered’, the Registered Design is not ‘enforceable’ against an infringer, until it is ‘Certified’.
CERTIFICATION OF THE REGISTERED DESIGN
If a Registered Design is to be enforced against an infringer, it must firstly be ‘Certified’ by going through a substantive examination process.
Examination may be requested at any time. When examination is requested, the Examiner will conduct a search of to make a comparison of the product with any similar types of products which existed or which were published before the priority/filing date of the design application, to ensure that the design is new and distinctive.
Once it passes through the examination process, a ‘Certificate’ of examination is issued, and then the Certified Design may then be enforced against an infringer.
Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc.
©2018 Halfords IP
An Australian Design Registration only protects you in Australia.
If you wish to protect the appearance of your product overseas, you will need to file separate overseas Design Applications in the countries of interest.
Australia has an international agreement allowing Australian Design applicants to file Design Applications within the first 6 months of the initial Australian Design application, while retaining the original priority date of the Australian case.
Each overseas Application will go through a separate examination process according to the Designs laws of the relevant country, before being registered.
The term of protection for overseas Design Registrations is generally longer than in Australia, and is typically around 20 or 25 years.
WHO CAN APPLY FOR A DESIGN?
A Design can only be registered to the designer(s) who created the Design, or to a person/ company who has ‘entitlement’ to the Design from the designer(s).
IS MY EMPLOYER ENTITLED TO MY DESIGN?
If the Designer is an Employee, and it is within the scope of the Employees duties to ‘create’ designs, then, under common law, the Employer may automatically have ‘entitlement’ to the rights of the Design.
CAN I STILL GET A REGISTERED DESIGN IF I HAVE ALREADY MADE, USED OR SOLD MY PRODUCT?
Unfortunately this is generally not possible…you should file the application for the Registered Design before there has been any public disclosure of the Design.
HOW LONG DOES IT TAKE TO GET A DESIGN REGISTERED?
The registration process can be quite quick, typically only a few weeks. This is because it is merely checked for compliance with certain ‘formalities’ before it is ‘registered’.
However, a Registered Design cannot be enforced against an infringer until it is examined and ‘Certified’.
Certification can also be quick, typically weeks or a few months, but this depends on Designs Office backlogs.
CAN I EXTEND MY REGISTERED DESIGN FOR MORE THAN 10 YEARS?
Unfortunately, Australian Designs cannot be extended for more than 10 years.
WHEN DO I NEED TO FILE OVERSEAS DESIGN APPLICATIONS?
An Australian Design covers Australia only. If you wish to protect your invention in other countries, you need to file applications in the countries of interest.
Australia has international agreements allowing Australian Design applicants to file Design applications in most foreign countries within 6 months of the first Australian Design Application while retaining the original priority date.