Replica product “specials”

If you shop at a mainstream, foreign-owned supermarket, you may have recently noticed a range of replica products being advertised as upcoming weekly special purchases. One such product is a wooden side table (shown below, right), retailing for $69, which some have suggested is very similar to a stool (shown below, left) produced by a high-end Australian designer, retailing for up to $700.

Source: DIA website

The similarity between these products prompted outrage in some circles, causing the Design Institute of Australia (DIA), the national industry body for design, to vocalise its concern. Coincidentally, the supermarket chain then pulled the side table on the day of the sale citing quarantine issues.

Whilst this is a win for the designer’s brand, and Australian design in general, this is down to goodwill rather than any reliable legal basis. The story may have been quite different (or non-existent) if the stool design had been the subject of a valid Australian registered design. If so, that would have enabled the design owner to assert its rights to prevent the sale of the replica product.

Sadly, this is not the first, and certainly won’t be the last, story of locally developed innovation being appropriated by a big player. For example, the same supermarket chain has also advertised upcoming sales of a floor lamp and arm-chair which are remarkably similar to products sold by other local retailers.

Unlike many other jurisdictions, Australian copyright does not extend to product designs which are industrially applied. This means that if design registration is not sought before the design is made public, the design owner is unable to prevent the legitimate copying of the design by a competitor. All of the above mentioned product designs are valid candidates for design registration but registration was not obtained. By not engaging with the registered design system, it appears the owners of these designs have been disadvantaged and may lose sales.

So what is an Australian registered design?

A registered design protects the appearance (visual features) of a product. This provides a legal right to prevent unauthorised exploitation of a product, in Australia, which embodies a design which is identical, or substantially similar in overall impression, to the registered design.

To obtain a valid design registration the design must be new (not identical) when compared to all designs which are publically available at the time of seeking registration. This means that registration must be sought before the design is publically disclosed, for example, at a trade show or online (including social media).

A wide range of designs can be registered. For example, textile patterns, jewellery, and functional shapes can all be valid registered design subjects. Registration protects the design for up to 10 years in Australia.

Obtaining registered design rights is typically simple, cost effective and quick, taking two to six weeks from application. If you would like to discuss the Australian registered designs regime further, please contact Stuart Campbell at FB Rice.