How do obtain rights in a design?

What can I protect by way of a registered design?
Fundamentally, registered designs rights exist to protect the visual appearance of a product. The range of visual features that can be protected are shape, configuration, pattern and ornamentation of the product.

Features concerning the feel of the product, the substance it is made of, or its colour are all features that are unable to be protected by design registration. It is also important to note that whilst a product's function is not protectable per se the mere fact that a products visual features are dictated by function is not a bar to registrability unlike in some other foreign jusidictions.

How long can I get protection for my new design?
The introduction of the new designs regime by the Designs Act 2003 (Cth) introduced a number of changes including the reduction in the maximum term of protection from 16 to 10 years.

Can I get protection for any new design?
In order for a design to be registrable it must be new and distinctive. To be new it must not have been used in Australia, nor published in a document in Australia or anywhere in the world. To be distinctive it needs to be substantially different in overall appearance to other designs already in the public domain.

The test for distinctiveness is intended to have the effect that minor changes to an existing design will not allow it to be considered for registration and protection.

Will my registration be effective against infringers?
The test for infringement will be consistent with the test for registration in that an offending design need only be of overall impression of substantial or significant similarity to the registered design in order for it to infringe the registered design. Put simply, small changes made to your registered design will not prevent a finding of infringement by a Court.

My products life cycles are too short to invest heavily in registrations, are there alternatives?
Yes. The alternative to registration now offered by the designs regime is that of publication where you abandon your right to registration and instead request IP Australia to publish your new and distinctive design. By publishing your new design you effectively are making the design freely available to the public. Importantly however, it prevents competitors from obtaining protection over what is essentially your design.

The consequence of that is that no other party can come to you with a registered design and threaten or even initiate litigation for infringement. It is surprising how effective a tactic this can be, particularly against importers of novel designs who do not have access to the plans and diagrams used during the creation of the novel design.

When do I decide whether I want to register a design or just publish it?
You decide that at the time of first application. Subject to your application then satisfying a formalities check, it will proceed to registration or publication without first having being examined by IP Australia in respect of it being a new and distinctive design.

If I have obtained my registration and I see a competitor selling goods made pursuant to my design, can I act straight away?
No. Should you wish to commence proceedings for infringement of the registered design you will not be able to do so until such time as the registration has been examined by IP Australia in respect of whether it is a new and distinctive design, and certification issued.

You can choose to have your design registration examined at any stage after registration.