Jenny Wyndham-Wheeler and Dr Radhika Moore provide an up-to-date overview on the different types of designs rights in Australia and the protection that is available to product owners.
A design is a type of intellectual property right which protects the overall visual appearance of a product. If the way the product looks has unique visual features which assist to set the product apart from other similar products, then design protection can provide a commercial edge.
By registering a design, the owner has the exclusive right to use (and to authorise other people to use) the design in Australia. This exclusive right has value that can be sold or licensed in Australia. The owner also the ability to apply for overseas design protection for the same design within 6 months of filing the Australian design application. Lastly, the owner has the ability to enforce the design against infringers once the design application has been examined and subsequently certified.
Different types of designs can be registered in Australia. For example, a new product including one which is made up of several parts, one that has indefinite dimensions, and a kit.
Designs for a product
A registered design protects the overall appearance of the product resulting from the visual features of the ‘product’. This means to be able to protect something by a registered design, it must be a ‘product’. A ‘product’ is something tangible that is handmade or manufactured. Things that occur in nature cannot be registered because they are not handmade or manufactured. Likewise, intangible things cannot be registered as they lack material substance. For example, graphical user interfaces are not considered a ‘product’ in Australia. Graphical user interfaces include graphics on a screen such as such as logos, type-fonts, user interfaces and icons. While they may have visual features, graphical user interfaces do not meet the definition of a ‘product’ under Australian law.
Complexities can arise when the product is made from different parts that fit together and each of these parts contributes to the aesthetic of the product. An illustrative example is a car. The overall appearance of a car can be influenced by the shape of the chassis as well as the design of the wheels.
For products where each of the components will only ever be sold together as the final product, you can simply apply for a design application for the overall appearance of the product as a whole.
In some cases, there are other options you may wish to consider. These are outlined below.
Complex products
A complex product is one that is made up of at least two components and can be taken apart and put back together.[1] For example, products that are held together with releasable fasteners such as screws that are designed to allow disassembly and reassembly. However, something held together by a cable tie is not a complex product, because a cable tie is not designed to be undone and redone.
Design protection is available for the whole assembled product and/or the component parts. For example, where the component part is removable to allow its replacement with a new component part, then design protection for both the whole assembled product and the component part is recommended as both have commercial value. [2]
Applications for a single design for a product including different components should include representations illustrating:
- how the components are formed together;
- how the components interact; and
- what the product looks like when assembled.[3]
For example, if you have designed a new unique pen and pen lid, each component can be protected through a separate design application. This is because the pen lid is made separately from the pen.
Kits
Kits and sets that contain separate items which, when assembled, make up a product can be protected by a single design application.[4] Typically, this is useful when each of the components of the product are not individually eligible for design protection. The assembled kit is the ‘product’.
A design application for a kit must show how the components fit together. For instance, by including representations using exploded or environmental views.
An example of what meets the criteria for a kit is a ‘model airplane kit’ in which the representations show how the items sold in the kit fit together to make a single model airplane design. On the other hand, a first aid kit does not meet this principle because it is a mere collection of items. The components of a first aid kit do not fit together to make a single product.[5]
Indefinite dimensions
Something that includes one or more indefinite dimensions as part of its design can be registered as a product only if:[6]
- a cross-section taken across any indefinite dimension is fixed or varies in a regular manner;
- the dimensions remain in proportion;
- the cross-sectional shape remains the same;
- it has a repeated pattern or ornamentation.
Examples of products with indefinite dimensions which can be registered include:[7]
- simple extrusions where the shape or dimension of the product does not vary in cross-section – for example a pipe; and
- products with repeating patterns – for example textiles.
Conclusion
Design protection is available in Australia for many different types of ‘products’. Registration and certification of a design is a two-step process. A design can be solely registered and act as a defensive tool. To be certified as a registered design, the product must be new and distinctive. Certification is optional. Once certified, the design can be enforced against infringers. For most products, a single design application is sufficient. However, for more complex products, several applications may be required to ensure the entire product is protected.
Want more information on a design filing strategy?
Our Designs team at Griffith Hack have considerable experience advising on a range of design matters, including preparing design applications, conducting novelty and infringement searches, filing applications locally and internationally, initiating and defending opposition proceedings, running ownership disputes, performing designs watches and managing design portfolios. If you have any questions about your designs filing strategy, please do not hesitate to contact Jenny or Radhika, or your regular Griffith Hack contact.
Footnotes
[1] Designs Act 2003 (Cth) s 5.
[2] Designs Act 2003 (Cth) s 6(2).
[3] https://manuals.ipaustralia.gov.au/design/component-part-of-a-complex-product
[4] Designs Act 2003 (Cth) s 6(4).
[5] https://manuals.ipaustralia.gov.au/design/assembled-set-or-kit
[6] Designs Act 2003 (Cth) s 6(3).
[7] https://manuals.ipaustralia.gov.au/design/indefinite-dimensions
