Registered design protection – potentially an invaluable right for SMEs
Registered designs are often likened to the ugly cousin of patent rights and as such are often overlooked as a potential valuable right for protecting new products developed by SMEs.
Where patents protect the underlying functional concept of an invention, registered designs protect the visual appearance of a product. Registered designs may be particularly valuable to protect SMEs against infringers taking products that have a unique appearance, but no new functional features that can be protected by way of a patent.
The Australian Designs Act governs the registration of designs and provides that designs can be registered in respect of the overall appearance of a product resulting from one or more visual features, i.e., the shape, configuration, pattern and/or ornamentation of a product. To be registrable a design must be novel worldwide and also distinctive compared with existing designs. To be novel a design must not be identical to another prior design whereas a design is distinctive if it is not substantially similar in overall impression to another prior design.
Upon lodgement of a design application at IP Australia, the application undergoes a formalities examination. The formalities examination serves to assess, among other formal matters, whether all necessary information has been provided and whether all required documents have been submitted. Also, the representations are examined as to their reproducibility by photocopying. Upon passing the formalities examination, the design is registered and a Certificate of Registration issued.
It is important to point out that a design is registered without it having undergone any substantive examination, i.e., an examination as to the novelty and distinctiveness of the design. The Designs Act provides that the proprietor of registered design may only enforce its design rights against third parties once a registered design has passed substantive examination and a Certificate of Examination issued. Examination may be requested at any time by either the registered proprietor or any third party.
Upon receiving a request to exam a registered design, IP Australia will conduct a search to locate any existing designs which are prejudicial to the newness and distinctiveness of the registered design. Should IP Australia locate documents which in its opinion are prejudicial to the newness and distinctiveness of the design registration an Examiner’s Report will issue. The proprietor will then have six months within which to overcome the Examiner’s objections, failing which the design will be revoked.
From a cost point of view it is beneficial that a design is registered without the additional costs associated with substantive examination. It is thus possible to obtain a design registration number which can be applied to products embodying the design as well as in all marketing material relating to products embodying the registered design at relative low cost. Should the design not proof to be commercially successful or infringed by third parties the registered proprietor may decide not to incur the cost of substantive examination. On the other hand, if products embodying the design proof to be commercially successful, the proprietor can request examination at that stage to ensure that the design registration is certified so that the proprietor is in a position to take immediate action upon becoming aware of an alleged infringer.
Registered designs have a term of 10 years. To maintain the design registration for the full 10 year terms a renewal fee payment is due on the fifth anniversary from filing.
A design registration will be infringed by any third party which makes, imports, sells, offers to sell, hire or use for trade a product embodying a registered design without the permission of the registered proprietor. The test for establishing infringement comprises a visual comparison of the alleged infringing product with the representations on file at the Designs Office for the design registration. It is then assessed whether the alleged infringing product is identical or substantially similar in overall impression to the registered design.
The remedies that can be granted by court against an infringing party include an injunction restraining the infringing conduct, damages or an account of profits.
Registered design protection can be obtained relatively quickly and at relative low cost. As such registered design rights can potentially be a very effective means for deterring copying of products. SMEs are well advised to explore the possibility of securing design rights for the appearance of any new products that are developed.
André Meyer is an associate at Spruson & Ferguson Patent and Trade Mark Attorneys.