Own a Business in Australia?
You May Need to Register Your Product Designs to Protect their Visual Appearance (and Value)

If you have product designs that you feel may be copied or infringed upon, it may serve you well as an Australian business owner to protect these designs by registering them with Intellectual Properties (IP) Australia. 

 

Design registration with IP Australia will protect the actual visual appearance of manufactured products.  

Initial registration protects the design for five years and can be renewed every five years to ensure your designs remain protected.    

Why register your design?

Once your registered design is examined and certified by IP Australia, you may sue for infringement if another person uses your registered design without your permission.  

Additionally, once your design is registered, as the exclusive owner of the design, you have the rights to:  

• Use the design specified in your registration
• Authorize others to use your design as specified in your registration
• Take action to stop other people using your design after examination and certification  

Additionally, registering your design for personal property provides other benefits, such as growth in value and the ability to be sold at a later date.  

And, because the registration covers the whole of Australia, you have the peace of mind that comes from knowing “copy-cat” designs will not pop-up within your immediate marketplace.  

However, before you register your design, it is important to understand that the protection you receive is only for the appearance of the product and not how it works.  

Also, keep in mind that you do not have to register your design to use it. But, making it available to the public before you register it deems the design “not new,” according to IP Australia, and after doing this, you will not be able to register the design.  

In short, you must file the application for design protection before making the design public, but, before you do this, take the time to first determine if the design is eligible for registration.  

Is your deign eligible?

To be eligible for design registration, your design must be new and unique, which means the design has not been publicly used in Australia or published in a document anywhere in the world before the priority date.  

Additionally, the design cannot be similar in overall impression to any design in the prior art base.  

According to IP Australia, you may not register a design featuring:

• Medals
•  Information or graphics that might reasonably regarded as scandalous material
•  Anything that includes the word 'Anzac'
•  Coins or notes of a kind prohibited under the Coins Currency Act 1991
•  Layout for an integrated circuit
•  The Olympic rings symbol, the Olympic motto (both in Latin 'citius, altius, fortius' and in English 'faster, higher, stronger') or the torch and flames design proscribed under the Olympic Insignia Protection Act
• Representation of Queen Elizabeth II or any member of the Royal Family
• Certain coats of arms, armorial bearings, flags and emblems    

Before you apply

Before you apply for registration, you will want to conduct a search of existing registered designs. This will help you determine if your design is, in fact, unique. Also, while the design may be new to you, you will want to make sure it has not been previously used and only a search of the existing registered designs will help you determine this.  

It is worth noting that you could be forced into legal action if you violate someone else’s the design rights. When not sure, you may want to rely on a patent attorneys and professional searching firms. Both can help you search and apply to register your design.    

The application process

The Designs Act 2003 provides anyone looking to register a design with an efficient registration system, allowing various options for filing. A design application can be filed containing:

1) One design;
2) a common design in relation to many products;
3) multiple designs for one product; or
4) multiple designs for many products, as long as the products fall within the same classification class.  

While there are options for filing, there is only one person eligible to complete this process and this is the owner (an individual, a company, an association or a partnership of the design), or the person who conceived the design, the employer of the design creator (if the design is made in the course of employment); the person who contracted the designer to make it; or the person to whom the creator has assigned the design, and this assignment must be established in writing.

How to apply

Currently, designs applications with IP Australia cannot be filed online.  

There are, however, downloadable forms and instruction guides you can use to complete the design registration process.  

Your design application must include the following:  

• A completed application form
• Five identical copies of each view of your representations of the design/s; and
• The application fee (which is $200)  

Note: While the fees may change, currently there are additional fees charged for various reasons. You will want to verify the amount of the fee you need to enclose with your application before sending this off. Additionally, renewal fees (which are paid every five years) are different than original registration fees.    

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