Clifford Gouldson Lawyers

Understanding design protection for your business

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IP Australia, the government body that administers intellectual property legislation in Australia, defines a design as referring to the features of shape, configuration, pattern or ornamentation which gives a product a unique appearance, and must be new and distinctive.  In other words, design protection is for the appearance of a product, unlike patents which protect how an invention works.

Many innovations can be registered as designs.  However, design registration is intended to protect designs which have an industrial or commercial use.  Some famous examples include Coca Cola bottles, Mazda motor vehicles and canopies for a BP service station.

In order to protect a design it is necessary to file an application with IP Australia.  Provided the filing requirements have been fulfilled, registration is basically a formality.  Because it is registered without checks to see if the design is new and distinctive, design registration does not, in itself, give the owner the right to bring a claim that a third party is infringing their rights.  In order to do this, the design must be certified. 

The design owner (or a third party*) can seek to have the registered design examined for certification.  If an application is filed for the design to be examined the Designs Office will do a thorough check of prior art.  This involves checking the designs database in Australia and overseas.  It also includes thorough searches on the internet.  If the Designs Office determines from its checks that the design is new and distinctive it will certify it.  If not, it will be rejected.

Once a design is certified the owner can protect its rights.  Due to the penalties which can be imposed on an infringer, possible infringers may be discouraged from copying a design merely because the design is certified and therefore protected.  Infringers can face penalties including damages or an account of profits.  They may also face an injunction preventing them from making or selling the infringing product.

How do you prove design infringement?

For design rights to be infringed the infringing design must be the same or substantially similar to the certified design.  In determining whether designs are substantially similar, similarities will be given more weight than differences.  If only parts of the designs are similar, consideration is given to how much is similar and the quality and importance of the similar parts compared to the design as a whole.  The test is based on the overall impression created in the mind of a so called ‘informed user’ (ie. someone familiar with products of this type), rather than a casual glance at the two designs. 

Designs legislation is intended to encourage innovation.  This means that if a person sees a design and works out a way to make it better and different, it is possible for that person to change the design without infringing it.  Provided the resulting design is not the same or substantially similar to the original one, then no infringement will occur.  To determine whether your design rights have been infringed it is worthwhile seeking the advice of a legal professional.

What applicants should know before proceeding

  1. Keep your design secret.  Failure to keep the design secret may result in the application being invalid.
  2. Design applications include photos or illustrations of the design.  The better the photos or illustrations the better the enforceability of the design.  If these clearly show the distinctiveness of the design it is easier to prove infringement.
  3. Consider including a statement of newness and distinctiveness.  This statement can show how the design is different from other earlier designs.
  4. You need to be the owner of the design to seek registration of a design.  If you are not the owner your right to registration can be challenged and if successful the registration can be revoked or transferred to the actual owner.  If you have come up with the design yourself, photograph and record details of the designs as and when they are created. 
If your employees have created the design, ensure your employment contracts detail ownership of designs created in the course of employment.  If you engage a third party designer and you want ownership, ensure this is recorded in writing prior to engaging them. A legal professional can assist you in ensuring your rights to the design are not compromised.

* A third party may apply to have the design examined in order to have it proved that the design is not new or distinctive and therefore should be removed from the register.  This is most likely to happen where the third party has its own design (registered or not) which is the same as or very similar to the design in question.

If you need further information about designs or want to protect designs within your business contact a member of our Intellectual Property Team.

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