While many readers would be familiar with the concept of a registered trademark or patent, as well as copyright, in the realm of intellectual property law designs and the associated rights obtained on registration are often not fully understood or appreciated.
A design is defined in section 5 of the Designs Act 2003 (Cth) (‘Act’) as, in relation to a product, “the overall appearance of the product resulting from one or more visual features of the product”. The visual features that form the design include the shape, configuration, pattern and ornamentation of the product. The Act allows individuals, companies and trusts to apply for registration of a particular design, subject to certain criteria being established.
The success of a product typically hinges on a number of factors including functionality and branding but also design. The design of a product includes technological features in the product as well as the features of shape, configuration and pattern of or applied to the product. These features of a product can be protected by way of a design application and where a registrant has been able to prove infringement, remedies are similar to those that may be achieved through a law suit for trade mark infringement, with the most common remedy sought being an account of profits, which allows the registered design holder to sue for all profits an infringing party has made in selling a product with an infringing design.
Generally, notwithstanding that there are countless designs in existence, manufacturers do not always bother registering designs due to a variety of reasons. Often their reluctance is because they are unwilling to incur the costs of registering a design until the design has proven to be popular however usually, at such a stage in the life of a product, it is too late to file the application as one of the primary criteria for registration is that the design must be new in the market on the date of filing the application. To be registrable, a design must be new and distinctive. ‘New’ means the design has not been publicly used in Australia nor has it been published in a document within or outside Australia. A design is ‘distinctive’ if it is not substantially similar in overall impression to other designs already in the public domain and it has not been publicly used in Australia nor has it been published in a document within or outside Australia.
A registered design can be a valuable commercial asset. A registered owner:
- has the exclusive right to use the design specified in the registration;
- has the exclusive right to authorise other people to use the design as specified in the registration;
- has a registered design which is ‘personal property’ that can grow in value and can be sold; and
- has a registration which covers the whole of the Commonwealth of Australia.
Registration initially protects a design for five years from the date the application was filed. The design registration can be renewed for a further five years. Once the design has ceased, it passes into the public domain and is free for anyone to use.
Recently, we had a matter that demonstrated the importance of design registration and associated due diligence. A client of ours, a local businesswoman, decided to start a makeup accessory business that sold, amongst other products, certain makeup brushes which were purchased from a supplier in China. The businesswoman had no reason to believe that the brushes were being sold in breach of a registered design and was shocked to receive a cease and desist letter from the in-house legal department of a major US corporation informing her that they had a registered design over the makeup brushes at issue in Australia and demanding that she destroy all of the infringing product in her possession and provide an account of profits. Fortunately, we were able to negotiate the matter and no monies were required to be paid to the US corporation for an account of profits however our client did have to undertake to destroy the infringing product, costing her significantly. If she had undertaken due diligence and instructed a solicitor to search the designs register, she would have become aware of the US company’s registered design and could have then taken steps to modify the design or use a different non-infringing design. Undertaking this type of due diligence, a relatively inexpensive exercise, would have saved her thousands of dollars.
In the event that you are manufacturing, or arranging the manufacture of, a new product we strongly advise that you apply for design registration or, at the very least, instruct one of our intellectual property lawyers to search the designs register to ensure that your hard work will not end up profiting another enterprise. Remember, it is essential that the design be registered before you commence selling the product in order to meet the requirements of the Act. Accordingly, before rolling out a new product to market, we highly recommend that you contact one our expert intellectual property lawyers today to discuss, amongst other things, protecting the visual appearance of your product through design registration.
