Design protection basics

Intellectual property is an important business asset in today’s global market. A design registration that can cover the appearance of a product, is one way of protecting your intellectual property.

What designs registration protects

A design registration protects the overall appearance of a product. Almost any type of manufactured product can be protected in this way and there are very few exceptions. Whether the product is a small paper clip or a 500 seat passenger aircraft it can be capable of protection by way of a design registration.

The scope of registered design protection is confined to the appearance of the product; it does not protect the design’s functionality when embodied in a product of different appearance. This means that if a design incorporates a new functional component that is not limited to its appearance, patent protection may be more appropriate.

The relationship between registered designs and other types of intellectual property

Although designs registration primarily protects the appearance of a product, it can co-exist with other forms of IP registration, such as patents and trade marks:

• Designs and patents
  It is possible to protect a product with both a patent and a registered design. The design registration would protect its specific appearance, while the patent would provide broader protection for functional aspects.
• Designs and trade marks
  Although shapes of products may also be protectable by way of trade mark protection, that protection has quite limited applicability and detailed consideration needs to be given to its appropriateness in specific situations. Design registration is the primary way of protecting product shape and other aspects of appearance.
• Designs and copyright
  In most cases, the drawing or models on which a design registration is based will also be automatically protected by copyright. However, copyright cannot usually be used to prevent copying of the product itself and reliance should not be placed on copyright protection alone without taking advice beforehand, as this issue involves complex considerations of overlapping provisions of copyright law and registered design law.

What types of designs can be registered?

To be validly registrable the design must be of new appearance, meaning that the appearance must differ from that of prior products. The assessment is made by looking at prior documents published throughout the world, and prior use of similar designs in Australia.

How “new” a design must be in each case will depend on a variety of different factors, including the nature of the product itself and the scope for innovative design in products of that type.

The term of registered designs protection for registered designs

The Designs Act 2003 permits registration for a maximum of 10 years after which others can freely use that design without infringement. A renewal fee is payable at the 5th year in order to obtain the maximum 10 year term of protection.

Registration under the old Act

Registrations under made under legislation prior to the Designs Act 2003 have a maximum term of 16 years. As the Designs Act 2003 did not come into force until June 2004, for many years there will be both ’new Act‘ designs with a maximum of 10 year term and also "old Act" designs with a maximum 16 year term.

Find out how we can help you

If you would like to learn more about designs, or any other area of intellectual property, Davies Collison Cave can customise a presentation to suit your needs. For further information or advice please contact your nearest Davies Collison Cave office.