Information for Corporate Clients
DESIGNS
1. What is a design?
A registered design is a statutory monopoly that exists to protect the visual appearance of a product as apprehended by the eye. Often a registered design will be filed to protect the features of three dimensional shape and configuration of a design as apprehended by the eye. However two dimensional design features such as pattern and ornamentation can also be protected by registered designs.
Design features may be solely aesthetic or they may combine aesthetic design with an ability to perform a function. For example an arm of a chair performs a function as well as having aesthetic design features.
Further under Australian design law designs that are purely functional may be registered.
It should be borne in mind that a registered design does not and cannot protect a method of manufacture. In the words of Russell- Clarke it confers protection for one specific and individual appearance. It cannot protect a range of designs produced by a common method of manufacture.
An important characteristic feature of a design right is that it confers a monopoly right and gives the owner of the design the right to exclude third parties from making and selling an infringing design for the life time of the design. A design right can be useful for stamping out slavish copying of a product.
However it should be borne in mind that a design right is generally narrower than a patent right. Thus for example a design right will not assist a design owner to stop the manufacture and sale of a product that "borrows" ideas from a registered design but utilises these ideas in a different design.
2. Registrable subject matter
As a general principle a design that is applied to an article can be registered. The article might be an article of manufacture or a part of an article of manufacture if made separately.
For a design to be registrable it must be new and distinctive when compared with the prior art base as it existed before the priority date (typically the filing date) of the design. The prior art base for a design consists of designs publicly used in Australia, and designs published in a document within or outside Australia. The prior art base also includes designs that have been previously filed at the Australian Designs Office even though they are as yet unpublished.
A significant change over the previous designs law is that the Designs ACT applies a standard of absolute novelty in respect of designs published in document form. Under the old Designs Act only designs that were published in Australia were citable against an Australian design application.
As described above a design must meet both the requirements of being new and distinctive over the prior art base. A design is regarded as "new" over the prior art if it is not identical to a design that forms part of the prior art base. A design is regarded as being distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design as it existed before the priority date of the design.
3. Benefits of obtaining design protection
The registered design law in Australia confers a monopoly right on the designer of a new and distinctive design. A monopoly right is very powerful as it can be enforced against any infringers.
The owner of a register design has the exclusive right, during the term of registration of the design, to make or offer to make the product in relation to which the design is registered. Further, the owner may import such a product into Australia for sale, or use the product for the purposes of any trade or business.
The scope of the monopoly right is determined the drawings or representations covering the design application and the statement of newness and distinctiveness accompanying the application. By preparing the representations in a special way certain features of the design of an article can be emphasised and other features can be deemphasised.
The owner of a design may authorize or licence a third party to exploit the design in their stead by means of an exclusive licence or alongside them in a sole licence agreement. The owner of a design may also assign a design to a third party.
The term of registration of a design is initially five years and extendible to ten years subject to the payment of a prescribed official fee that is payable before the anniversary of the fifth year from the date of filing the design application.
Registered design applications are usually fairly inexpensive to apply for and obtain. They therefore provide a fairly inexpensive way of obtaining a monopoly right for a new product having design features that can help to stop slavish copying.
*Please refer to our brochure for more information on designs*
