What is a registered design and what does it protect?
A registered design protects the overall appearance of a product resulting from one or more visual features. Visual features include shape, configuration, pattern and ornamentation. A valid Registered Design can give the owner exclusive rights to use and to authorise others to use, a design that has an appearance that is both new and distinctive.
A valid design will have a visual appearance that is not identical or substantially similar in overall impression to a pre-existing design that has been used in Australia or published in a document within or outside Australia before the filing date of your application. After a substantive examination and certification of a registered design, the intellectual property in the design will be enforceable. By obtaining design protection through the registration and certification process, you may obtain a monopoly of up to 10 years in which to exploit commercially the design.
It is important to understand that a Registered Design exists to protect the appearance of a product only. It does not protect the function of a product. If protecting the function of your product is of importance to you, you should consider obtaining Patent protection. It is possible to have both Patent and Registered Design protection for the same product as they each protect different properties.
Why do I need a registered design?
A registered design grants you statutory rights to use and to authorise the use of, the design identified in your registration. A certified design confers the right to take action against other people or businesses who, without authorisation, are dealing in products that embody either your design or a design that is substantially similar. A certified design also gives you the right to take action against those who are importing such products into Australia.
A registered design gives you a right that may be used in commerce by way of assignment (sale) or by granting licences to use.
When should I apply for a registered design?
It is important to lodge your application for a registered design before publishing, using or otherwise disclosing the design. If you do not lodge the application before disclosure, any subsequent design application will likely be invalid. It is therefore recommended that you discuss with your attorney your options with respect to the design before filing, so that the most effective strategy for commercially exploiting the design may be implemented.
What are the steps in obtaining a registered design?
The first step in obtaining design protection is the lodgement of your application, together with representations of the product or products. An application may be made in respect of a single design in relation to one or more products.
Once the application is filed, a formalities check will be performed, after which the design will be registered. Request for registration may be made at any time within six months from the date of filing. Registration lasts for an initial period of five years, after which it is possible to extend the term for a further five years, giving a maximum of ten years registration.
The rights in a registered design may only be enforced only after a design has been successfully examined and certified. Published designs may be used simply to prevent another party from registering the design.
You may also wish to obtain protection for your design overseas. This should be discussed soon after filing your Australian application, as time limits apply with respect to the overseas filings.
If it is desired to enforce the rights in a registered design it is necessary to request an examination of the design and obtain a certificate of examination. During the examination, the design is compared with prior published designs from available searching sources from around the world.
If successful a certificate will be issued and the rights in the design can be enforced unless the Examiner has determined grounds for revocation of the design during the examination.