What We Do
Greyson Legal provide intellectual property law advice. If you have a unique design and wish to protect the IP in the design, contact us for details on how we can assist you.
What is a Design ?
A design can be described as the way a particular product looks - its visual appearance. For example, it’s shape, pattern or the way a product is packaged.
“Appearance” of a product should not be confused with the product itself or its “function”. The product’s functionality or the way in which it operates is a separate IP right which, subject to meeting the relevant criteria, can be protected through patents.
It can be the case that a particular product/invention needs design protection, patent protection or other IP protective strategies.
Given designs do play an important part in a product’s branding, it is important to protect that intellectual property right.
We recommend before an Application is filed, that preliminary research and searches are undertaken to make sure no one else has already applied for or registered a design with the same idea as yours.
There are a number of steps involved in the Application:
There is an initial application filing fee of $250 per design if lodged on-line ;
An Application Form needs to be completed requiring preliminary information and details, such as:
Name, contact details of the Applicant;
How many designs form part of the Application;
Whether registration or publication is being requested;
Provision of drawings, images photographs of the design (eg. black-and-white line drawings of the item showing its unique design from a variety of different aspects (ie. front, side, top, perspective etc);
Provision of A Statement Of Newness And Distinctiveness. The Statement is not mandatory but can assist with any examination.
If the design passes the formalities check, the design can then be registered.
Once registered, your details as registered owner of the design will be entered on the Australian Official Journal of Designs (and is searchable).
When the Application is filed you can request at that point that the design be registered or published. However, you do have up until 6 months after filing if you have not decided on registration versus publication. Once the 6 months passes though the Application will lapse. Usually you would indicate in the Application whether registration or publication in being sort – which then avoids having to worry about the risk of lapsing.
Once registered, you will then:
have the exclusive right to use the design specified in your registration;
have the exclusive right to authorise other people to use your design – such as, to have a product manufactured utilising your design;
otherwise have the ability to commercially use, licence or sell the rights in the design.
Enforcing Design Rights
In order to take legal action against an “infringer” of your design rights, the registered design must be examined and a certificate of examination then issue – ie. that the design has been certified.
It is not compulsory for the design to be examined/certified. But, in order to obtain legally enforceable rights in the design, the design must be examined.
The examination process involves determining the design’s:
“New” means the design is new when compared with prior art.
"Distinctive" relies on the fact no other registered design substantially similar in overall impression to your design also exists.
If the registered design has passed the examination stage (ie. it is new and distinctive) a certificate of examination will be issued by the Designs Office noting the design as certified.
Certification will then allow you the ability to commence legal action against any future infringer of your design.
Don’t Publicise Design
A registered design application must be made before any public product disclosure or commercial use of the product occurs, or else it will be invalid.
Period of Protection
Registration will protect the design for a period of 5 years from when the application is filed.
It can then be renewed for a further period of 5 years. So, a maximum of 10 years.
If a registered design is not renewed, the protection given by the registration will cease. The design then passes into the public domain and will be free for others to use.
International Design Protection
Registration and certification of a design in Australia only protects the design in Australia.
If you require design protection overseas, then separate applications need to be made either directly to the overseas country in question or through the centralised process administered by WIPO. Time limits can also apply.