Protecting your new designs by way of registration
Are you creative?
Design registration may be your new best friend.
Designs can be registered for shapes or configurations of articles or patterns or ornamentation applied to articles.
Some examples are jewellery design, vacuum cleaners, furniture, toys, footwear, textiles, clothing and the shape of a new car headlight.
Design registration is recommended for all important and commercial designs.
It is often said that a design registration protects the way something looks, as opposed to a patent which protects the way that something works.
Design registrations can be much less costly than patent registrations because they are more straight forward.
Registered designs in Australia are valid for up to 10 years, provided renewal fees are paid. Times vary overseas. In New Zealand, for example, a registered design lasts for up to 15 years. In Australia, designs are automatically registered when lodged, providing there are no formality issues, but a registered design cannot be sued on unless and until it is examined (certified) and a certificate of examination is issued.
“New” & “Distinctive”
A registered design must be new and distinctive for it to survive examination. “New” means it cannot be identical to any prior design. “Distinctive” means that it must not be substantially similar in overall impression to any prior design. Any prior designs anywhere in the world can be used to invalidate a design registration if it shows the design is either not new or not distinctive.
The legal test of what is new or distinctive is not always the same as what you might logically think.It is important to seek design protection before using or displaying the design (otherwise you will not be entitled to obtain a valid design registration). There are no grace periods for disclosure prior to filing a registered design.
Statement of Newness and Distinctiveness
In Australia, we have the “Statement of Newness and Distinctiveness”, which allows features of the design to be highlighted as particularly new and distinctive at the time the design is filed. Carefully wording this can make the difference between gaining a valid design or getting a design that either cannot be enforced or is invalid.
IP Australia uses a “Statement of Newness and Distinctiveness” that we drafted for design number 366828, as an example of a “good” statement, for others to emulate. (Yay, so good when the official government department uses your work as an example of “how it should be done).
Benefits of Design registration
Design registration can be a powerful tool to stop others from using the same or similar design.
Designs are often considered to be the poorer cousin of patents, but the remedies available to a design holder for design infringement are no less powerful.
Often, once you have a design registered, all you need to do is send a copy of the design details to an infringer and they will stop right away (after all, no one really wants to be sued)!
Cathryn Warburton is the Legal Lioness. Finding the courage to overcome severe bullying as a child instilled in her a passion to protect others. As a skilled litigator, she indulges in her dream to push-back against business-bullies who target her clients. She is an international award-winning lawyer and patent attorney and 4-time published author. Cathryn bullet-proofs her client’s businesses and gets them out of legal hot water. She champions the goal that no business is left without access to affordable, easy-to-understand legal information. She does this through her books, legal workshops and 1-2-1 legal services.
Please note that this blog is provided for general informational purposes only. Each legal situation differs. Reading this blog cannot replace obtaining specific legal advice. We recommend that you obtain legal advice for your specific situation.