We provide a checklist below covering some important aspects to consider in relation to Australian Designs.
Are you seeking protection for features or appearance of a product?
Generally speaking, a design registration is limited to the visual appearance of a product. A design is the overall appearance of the product resulting from one or more visual features.
Unlike a patent, a design registration does not provide protection in relation to the construction or function of a product.
A design registration, once certified, affords its owner the ability to take legal action against a third party who manufactures, uses, sells, imports or otherwise exploits the registered design without authorisation from the owner.
Currently, a design registration in Australia has a maximum term of 10 years before it expires.
Is the design applied to a product?
For a design to be registrable, the design must be in relation to a product.
A ‘product’ is defined as anything that is manufactured or hand-made. For example, a chair is a product.
A product could also be a component part of a complex product if that component part is made separately. For example, a front bumper may be a component part, and therefore a product, since it is part of a complex product, that is, a car.
A product may also be a thing which has one or more indefinite dimensions. For example, an extrusion having a particular fixed cross-section may be considered to be a product. A window frame may also be a product if all the indefinite dimensions remain in proportion.
Have you selected an appropriate title/product name?
An application for a design must identify the product (to which the design is applied) sufficiently for the purposes of classification. During the registration process, the product is classified based on its intended purpose or use into one or more classes. The classification system used in Australia is based on the Locarno Classification which can be accessed here: https://www.wipo.int/classifications/locarno/en
An appropriate product name should be chosen to assist with classification. A generic product name or descriptor of the product is usually recommended. For example, if the design is in relation to a chair, then a suitable product name may simply be ‘a chair’.
Trade marks or brand names should generally not be used as the sole product name.
Is the design new and distinctive?
A design can be registered following a relatively straightforward formalities check.
However, to legally enforce the design, the design is required to be ‘certified’ by way of a formal examination process. Examination of a design involves an assessment of whether the design is ‘new’ and ‘distinctive’ when compared to the prior art base. The prior art base includes designs which have been published in a document anywhere in the world or publicly used in Australia before applying to register the design.
Being “published in a document” may include printed publications, CDs, DVDs, photographs, and the Internet.
A design is ‘new’ if it is not identical to a design that forms part of the prior art base.
A design is ‘distinctive’ if it is not substantially similar in overall impression to a design that forms part of the prior art base.
Unfortunately, this means that any prior self-publication of the design may prevent you from obtaining a legally enforceable design and so it is essential to keep the design confidential before applying to register it.
Can you identify those visual features of the design which are considered to be new and distinctive?
We typically include a Statement of Newness and Distinctiveness (SOND) when applying to register the design to emphasise those particular visual features of the design which are considered to be new and distinctive. We may direct the SOND to particular features of shape and/or configuration (i.e. 3D features) and/or to particular features of pattern and/or ornamentation (i.e. 2D features).
A well-crafted SOND is important in influencing the assessment of whether the design is ‘new’ and ‘distinctive’.
Are there multiple designs?
Whilst it is possible for a single application to include multiple designs or multiple embodiments, a separate fee is payable for each separate design in a multiple design application. The Australian Designs Office also issues a separate filing receipt, design number and subsequent design registration for each separate design.
Accordingly, filing a multiple design application for several designs has the same effect as filing several, separate single design applications.
Our standard practice is to file separate applications for each design embodiment.
We can, however, file an application in respect of a ‘common design’ applied to more than one product and only pay a single application fee. A ‘common design’ relates to those visual features which are common amongst different products on which the design is applied. For example, a common design could be in respect of a set of cutlery (that is, the shape of the handle on a fork, spoon and knife) or the same pattern and/or ornamentation applied to both a t-shirt and shoe.
Are the representations suitable?
Representations (that is, drawings or photographs) of the product embodying the design are included in the design application to show the design. Some key considerations to keep in mind are that:
the representations must show the whole product that is named (we typically recommend perspective views, side views, front and rear views, and top and bottom views to show the whole product);
the representations should show the design consistently (for example, all views must have the same details, and not include anything in one drawing that is not indicated or implied in another); and
the representations should be free from descriptive text (aside from view labels) or extraneous information.
Are the representations in colour?
Colour is considered to be a visual feature.
It is therefore essential to consider whether colour is important to the overall appearance of the design given that colour may be included within the scope of the design if the representations are in colour. Grayscale may be used if a contrast in colour is an important visual feature of the design.
Otherwise, we typically recommend for the representations to be in the form of black and white line drawings as a line drawing generally will not be limited by colour.
Designs are often an overlooked asset of an intellectual property (IP) portfolio but are often just as valuable as other forms of IP. Designs may offer a relatively inexpensive and streamlined process to obtain a monopoly for the visual appearance of a commercially valuable product.
The adage of “a picture is worth a thousand words” would seem to be particularly applicable to Designs.