A Registered Design gives to the owner of the design a monopoly right in respect of the appearance of a product embodying that design. The appearance can be defined in terms of visual features, such as shape, configuration, pattern and ornamentation.
Design versus Patent
There is a clear distinction between the protection afforded by a Registered Design and by a patent. Design protection is given only in respect of the appearance of an article, whereas the article itself, its functionality or the manner in which it operates may be protected by a patent.
It is, of course possible, and sometimes highly desirable, to have both design and patent protection for the same "invention". For example, it is possible to have a Registered Design in respect of the appearance of a product, say a telephone, and a patent in respect of the manner in which it functions.
More information on the advantages of the design registration system can be found here.
New Designs Act
Until recently the legislation governing Registration of Design in Australia was the Designs Act 1906. A new Designs Act 2003 came into force on 17 June 2004.
For designs registered under the Designs Act 1906, the Courts in recent years have taken a narrow view of the protection afforded by design registrations. As a result the scope of protection for such "old" designs, is generally limited so that only very similar designs will infringe a design registration.
However, it is expected that the protection afforded for designs registered under the Designs Act 2003, will be relatively broader than that provided under the 1906 Act. In particular, under the new Designs Act 2003, a person will infringe a Registered Design if they make or sell a product which embodies a design that is identical or substantially similar in overall impression to the Registered Design. In considering infringement, more weight will be given to similarities between the Registered Design and the alleged infringement than to differences between them.
Criteria for Registrability
Under the new Act, a design will be registrable if the design is new and distinctive when compared with the prior art base. The prior art base includes:
designs publicly used in Australia,
designs which have been published in a document either in Australia or elsewhere, and
designs which have been disclosed in earlier design applications.
A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base. When making judgement as to whether a design is substantially similar in overall impression to another design, more weight should be given to similarities between the designs than to difference between them. This is the same test as the infringement test.
3-D designs - loss of copyright
For three-dimensional designs which are to be applied to articles, it is important to file an application for design registration before any publication or use of the design occurs. Failure to do so may prevent later registration and curtail the copyright in the design.
2-D designs - dual copyright/design protection
Unlike three-dimensional designs, designs which are solely 2-dimensional patterns or ornaments applied to the surface of articles, such as pictures on T-shirts, do not lose copyright protection after publication and sale of the articles. Therefore, such designs can enjoy dual copyright/registered design protection.
Whilst copyright goes a long way in providing protection, a registered design may be a valuable tool when it comes to enforcing rights in the design. To show copyright infringement, a court has to be convinced that the alleged infringer directly or indirectly copied the design. In contrast, it is not necessary to show copying in the case of a registered design.
Applying for Design Registration
The registration process for a design begins with filing a design application at the Designs Office.
Although a single application for multiple designs is now permitted under the Designs Act 2003, the official fee for filing a multiple design application is the fee for a single application multiplied by the number of designs in the application. Further, each design in a multiple design application is separately renewable, hence a separate record must be kept for each design which forms part of a multiple design application. Consequently, we perceive that there is little, if any, cost benefit to an applicant in filing a multiple design application compared with filing a plurality of design applications each for a single design. However FB Rice routinely give a discount for multiple designs filed together whether as a single design or as multiple applications.
Minimum filing requirements
The application must include at least one representation of the design. Representations take the form of drawings or photographs which clearly depict the article to which the design is applied. The representations should show a perspective view of the article and a view from every side. Eventually, five copies of the representations will be required by the Designs Office.
Registration after formalities examination
After the application has been made, a formalities check is carried out. If there are any deficiencies in the application, a notice issues allowing two months to correct the deficiencies. If the formalities check is satisfied, the Registrar of Designs must register the design. The design application is not examined for newness and distinctiveness prior to registration.
Registered Design Unenforceable unless Certified
Examination of a Registered Design for newness and distinctiveness is optional. However a Registered Design is not enforceable unless it has been examined and certified. Therefore the value of an unexamined design application is limited. A fee is payable on filing a request for examination.
Upon examination, the Designs Examiner may issue a notice raising objections to the certification of the design, allowing six months to overcome those objections. In particular, the Examiner may object that the design is not new and distinctive in the light of one or a number of earlier design applications or registrations. In many instances, the objections may be overcome by filing suitable submissions. Official Reports will continue to issue until the Examiner is satisfied that all objections to certification of the design have been overcome or withdrawn. Once all the objections have been overcome, a certificate of examination is issued and the Registered Design is then enforceable. If the objections are not overcome, the registration may be revoked, subject to an appeal.
Ten Year Term
The initial term of a registered design is five years commencing on the day it is first filed in Australia. The registration may then be extended to ten years from the filing date by paying a renewal fee. No further extension of the term beyond ten years is currently possible.
Design registration or similar protection, is available in many overseas countries. Applications filed in most of these countries within six months of the date of filing a design application for the same design in Australia, will take a priority date from the filing date of the Australian application.