The Apple iPhone, Dyson vacuum cleaner, Nespresso coffee capsule. These innovative, design-driven products have become success stories around the world. The companies behind these products have used design to create valuable business assets and build their competitive advantage in the marketplace. They have also carefully protected these assets through a variety of intellectual property (IP) rights including registered designs.
What is a registered design?
A registered design is a form of intellectual property that protects the way a product looks. A design can cover both two-dimensional and three-dimensional visual features including a product’s shape, structure, pattern and decoration. To be protected in Australia a registered design must be new. This means that it can’t be identical to any existing design used in Australia or published anywhere in the world. It must also be distinctive, which means that it can’t be substantially similar in overall impression to any existing design used in Australia or published anywhere in the world. Protection can last for up to 10 years. Registered designs are different to other IP rights such as patents, which protect how a product works, and trade marks, which protect a product’s branding. Registered designs are all about appearance. The Breville Smart Grill, the new Qantas Q bag tag and check-in kiosk and the Dyson Air Multiplier fan are all designs that are registered in Australia.
Why register a design?
In today’s marketplace businesses are increasingly realising that the products they develop must not only function well but look good too. Innovative product design often generates favourable press, customer interest and loyalty, and allows a company to command a price premium over competing products. Unfortunately, good design also tends to attract copycat, me-too manufacturers who try to capitalise on visual innovation by manufacturing cheaper, lower quality imitations of design-driven products. Design registration allows a business to protect the investment it has made in design and product development. It gives the owner the exclusive legal right to manufacture a design and thereby protect market share. It is an intangible business asset which can grow in value and be sold or licensed to generate revenue. Importantly, it can enable a business to take action against copycats for design infringement. In some cases, a design may be automatically protected by copyright. However, copyright for certain three-dimensional products can be lost if they are manufactured on a larger scale. In any event, registered design protection is often preferable to relying on copyright as infringement tends to be easier to prove. The laws relating to the overlap between designs and copyright are complex and you should seek professional advice relating to your own particular circumstances. Manufacturers of design-driven products across a variety of industries such as furniture, consumer appliances, homewares, electronics, cars, packaging, clothing, footwear and accessories can all benefit from registering their designs. The owner of a registered design is generally the designer or the designer’s employer.
How to apply in Australia
It is important to seek registered design protection before you make your design public, whether on your website, in promotional materials or at trade shows. If your design is published before you apply you may lose the right to registration. Applications for registered designs in Australia are filed with IP Australia, the Federal Government agency that administers registered intellectual property rights. Application forms can be found online at www.ipaustralia.gov.auand submitted by post, fax, via IP Lodgement Points (check for locations in your state) or through an attorney. It is advisable to seek legal help, particularly if you are applying for a registered design for the first time. You will need to submit drawings or photographs illustrating your design. IP Australia will register your design if certain formalities are met. However, to be able to legally enforce your design you must request that your application is examined. Once a registered design has been examined and is certified you can take action against copycats.
How do you apply overseas?
An Australian design registration will not protect your design in any other country. Therefore, you should consider filing design applications in each of your major export markets to be fully protected. In most cases, overseas design applications should be filed within six months of submitting your Australian application. When filing in most foreign countries you usually can backdate your foreign application to when you filed your Australian application. In practice, this means that you won’t immediately have to decide where to protect your designs and can delay your overseas filing expenditure by up to six months. Bear in mind the laws, procedures and even terminology relating to registered designs differ from country to country. For example, in the US registered designs are called design patents and can last for up to 14 years. Designs in the European Union can be registered in individual countries separately but applicants can also seek a Registered Community Design which covers all 27 member states of the EU for up to 25 years. In some countries your design can be automatically protected without the need for registration. For example, in the EU some designs are protected for up to three years from the date they are made available to the public in any of the member states. Many countries require you to file design applications through a local agent if you are not a resident. It is advisable to seek help from an Australian attorney who can guide you through an international filing strategy and brief foreign agents on your behalf.
Keep it secret: make sure you don’t publish your design on a website or in promotional materials until you have applied for a registered design. Decide on your overseas filing strategy within six months: any later and you may lose the ability to protect your design overseas. Combine protection: if your product has a unique functional element, consider seeking patent protection. The same product can potentially be protected by a registered design (for appearance) and a patent (for function). If the look of your product has become recognisable as your brand you can also consider seeking trade mark protection for its distinctive shape, pattern or colour. Mark it: mark your product with the design registration number once your design is protected. This will help deter potential copycats, who won’t be able to argue that they were unaware of your registration. Do not make false claims about having a registered design.
Need more information?
IP Australia administers the registration of designs, patents, trade marks and plant breeder’s rights. For more information about registered designs and other forms of IP, please visit www.ipaustralia.gov.au. You can also contact IP Australia on 1300 65 1010 or email firstname.lastname@example.org. -Eunika Janus is IP Australia’s NSW marketing manager.
Breville’s well-designed protection
Leading Australian small appliance manufacturer Breville takes its design protection seriously. The company has protected the designs of its kettles, blenders, sandwich grills and other appliances around the world in countries including Australia, New Zealand, the United States, Canada, China and much of Europe. "Design registration and broader IP protection is critical for a brand like Breville in protecting our investment in innovation," says Jack Lord, General Manager, Marketing and Product Development at Breville. "The time and money Breville invests in design and technology increases year on year. Allowing others to benefit from Breville’s investment at little or no cost is simply a waste of resources." Breville uses practical measures to try to discourage potential copycats, quoting registration numbers on packaging and other printed materials as often as possible. The company also spends time scouring trade shows across America, Europe and Asia to try to pick up infringements before such products are actually brought onto the market. If copycat products do appear in stores Breville acts fast. "It is important to let competitors know that you’re serious and to stop the first infringers quickly," says Lord. "We were recently successful in the US in getting an infringing juice extractor removed from the market. By having the infringement rectified, we've improved the sales of our own product and sent a message to others that we will defend our IP in every instance".