Product designers operate in a highly competitive market and work tirelessly to get an edge over their competitors. Whether it is a new product or a distinctive packaging design, many companies put significant resources into their research and development and the subsequent marketing of new items to consumers. Making sure this valuable IP is adequately protected is a crucial part of gaining a competitive advantage.
We have noticed recently that clients are coming to us for advice on how to prevent the sale of look-alike or very similar products which are competing with, and taking market share from, their new and distinctive products. Unfortunately, many clients seeking to remove those products from the market have not sought to protect the appearance of their products under Australia’s registered design laws before taking them to market, leaving them highly susceptible to the sale of copy products and losing their competitive edge. In circumstances where a product designer has commercialised their product without first registering the design and the competitor’s copy product clearly bears the competitor’s own alternative brand, a product designer has few tools in their IP kit bag to prevent this conduct. In Australia, anti-overlap provisions dictate that relying on copyright in the artistic works underlying a commercialised product is generally not permitted. Even if relying on copyright is an option, it has the added hurdle of establishing, on the balance of probabilities, that the infringer has copied the product, which is not necessary when relying on a registered design. Additionally, whilst product shapes and decorative features are, in theory, registrable as trade marks, the reality is that it can be very difficult to establish that those shapes and features are functioning as trade marks, particularly in the absence of lengthy periods of use.
As a result, a lack of protection under the registered designs system leaves product designers in a weak legal position. Furthermore, product designers are impacted financially by this situation through lost sales and incurring unnecessary legal costs as they seek to try and identify a viable cause of action to prevent this conduct. Accordingly, for products which have a sufficiently long life expectancy, obtaining registered design protection is a cost-effective way to protect the product design.
Australia’s registered design system, which protects the appearance of products, is universally acknowledged as under-utilised. The question we are asking is – why? It is very straightforward to obtain a registered design and the official fee to file an application is modest. Applications undergo an initial formalities check and are then registered, with a substantive examination only being conducted if requested (by the owner or a third party). Substantive examination must take place, resulting in the issue of a Certificate of Examination, before the owner enforces its design against an alleged infringer. The owner of a valid registered design is able to take action against not only identical products but those which are substantially similar in overall impression to the registered design. Admittedly, the validity of a registered design is assessed against a broad prior art base which includes designs published in documents anywhere in the world and designs publicly used within Australia. Nevertheless, our view is that seeking design protection for products which are new and distinctive when compared to that prior art base would be worthwhile for many of our clients and put them in the best possible legal position when trying to get a copy product off the market in the most cost-effective manner possible.
We encourage clients to seek advice on the availability of protection under Australia’s registered design system the next time they develop a new product before disclosing their new and distinctive design to any third parties. Obtaining a registered design will clearly signal to competitors that a product designer is claiming rights to a new and distinctive product and will most likely deter competitors from marketing a similar product. This will put product designers in the best possible position to establish and maintain their hard-fought competitive edge in the marketplace.