Are you an artist or designer who wants to transform your creations into a business?
In this article, Jenny Wyndham-Wheeler and Dr Radhika Moore provide insights into why being proactive about your intellectual property strategy is valuable and how simple the process can be.
If you’ve developed a unique and distinctive pattern for jewellery, handbags, fabric, clothing or packaging, it’s important to consider protecting your intellectual property (IP) rights in that pattern.
Although the idea of using lawyers and dealing with the legal system may seem overwhelming or unnecessary, taking early steps to develop a strategy and file for protection can be incredibly invaluable. If you don’t apply for IP rights you’ll be limited to copyright protection only, which can be lost and difficult to enforce.
Copyright vs registered designs
Most artists and designers are aware that any original pattern created by drawing, graphic work or painting, whether created by hand or digitally, is automatically copyrighted. There is no need for a formal process to obtain copyright protection for your work. It’s free and generally lasts longer than designs.
However, relying solely on copyright protection may not be enough to enforce your IP rights. It can be risky, and, most importantly, copyright protection may be lost depending on the product, such as 2D or 3D, and whether the design is industrially applied and sold, that is 50 items or more.
This is where a registered design may be the ideal IP protection strategy.
Registering a design is easy and will provide you with some IP protection
Where there is a possibility of losing copyright protection once your design is commercialised then filing for a registered design ensures some protection for your intellectual property. As the artist, all you need to do is provide drawings that show your pattern applied to the product. After that, the process is relatively straightforward. Following a formalities check, the design will proceed straight to registration.
The design will only go through a substantive examination process upon request, which is usually initiated when you become aware of an infringer. This step is optional. Once the examination process is complete, the design is certified and can be enforced against the infringer.
A registered design is significantly easier to enforce than copyright
If you suspect someone of infringing on your copyright, you will need to provide evidence that they have copied your work. This could be in the form of a direct comparison between the pattern applied to your work and their work or by demonstrating a clear link between the two. However, if the person accused of copying can prove that they came up with the pattern or design independently, without any knowledge of your work, they will be found not guilty of copyright infringement.
In contrast, when it comes to registered designs, the alleged infringer’s state of mind is not relevant, that is the copying. If their work is found to be too similar to your registered design, they will be considered to have infringed upon it, even if they conceived it in isolation.
Establishing infringement has different tests
To prove copyright infringement, you need to demonstrate that ‘a substantial part of the work has been taken or used’. On the other hand, to prove design infringement, you need to show that the design and the alleged infringing work are ‘substantially similar in overall impression’.
What options are available?
If you’re considering registering a design as a way to protect your new and distinctive pattern, there are different strategies you can use to ensure the protection of both your pattern and the products that feature it.
- Only protecting the pattern – if you have a design with indefinite dimensions such as a pattern, you can register it for protection. To qualify for this category, the pattern must repeat itself and the application should contain representations showing at least one pattern repeat. If approved, the product will be defined as “a textile fabric with a repeating pattern”. An example of a textile fabric with a repeating pattern which is a registered design is AU202217824.
- Protecting a product featuring the pattern – if you have a pattern that you’ve applied to a product you may want to consider registering the design for that specific product. This is a good idea where the pattern, the shape and the configuration of the product are commercially significant visual features. Such products might include a garment, jewellery, a handbag or shoes.
Key takeaways
It can be tempting to assume everything will be alright and only react to potential infringement situations as they arise. However, copyright may not always be enough to protect your IP and a registered design must be filed before disclosing it to the public.
To ensure that you have properly protected your IP, it is recommended that you consult with a design specialist at an intellectual property firm. They can advise you on when, where, how and why to file for a registered design.
To safeguard your IP, it’s important to have an IP strategy in place. This should be done at an early stage in the development process and be proactive. The strategy should also consider what you want to prevent your competitors from doing or selling.
