Getting your design protection into shape

Are you considering the manufacture of products intended for the Australian market? If so, design registration can be a useful, relatively quick and cost-effective form of formal IP protection.

In Australia, design registration provides a monopoly right in the aesthetic appearance of a two-dimensional or three-dimensional design used in relation to a product. The design can be two-dimensional as applied to or three-dimensional as forming part of the shape of the base product - for example, the two-dimensional pattern on wallpaper, fabric or ceramic tiles, or the three-dimensional look of a bottle, mobile phone or item of cutlery.

Registered design protection in Australia is predominantly defined by what is shown in the “representations” (eg, drawings, images and photographs) that are filed alongside a design application. It is therefore vital that these representations accurately depict the design as intended to be protected, and usually as it is applied to the actual product intended for the market. Therefore, filing an application for design registration at the correct time is vital to obtaining valid protection and the correct scope of protection for the design.

Filing a design application before the design is finalised for production can result in the representations showing early, pre-production versions of the design that are no longer embodied in the product or simply that significant design changes have occurred for manufacturing, marketing or ergonomic reasons.

The corollary to this is to delay filing a design application until the final version of the design is completed. Such delay can risk invalidity of a design registration if the design has been disclosed before filing, such as through an over-zealous marketing drive to obtain a quick return on investment in design and tooling for the product or for sales and market penetration. An Australian design registration is valid only if the design is considered new and distinctive in light of designs published before the earliest filing date anywhere in the world or prior use of designs in Australia (ie, relative novelty).

If design registration is required, it is vital to ensure that a design application is filed once the design is finalised - often once engineering or manufacturing drawings are signed off - but before the product embodying the design is launched to market, disclosed or otherwise publicly promoted for commercial purposes. In the case of three-dimensional designs, the design defines the shape of the product intended for the market.

Confidentiality agreements with external designers, manufacturers and distributors should be put in place at an early stage.

Where the services of external designers have been employed under contract or agreement, it is best practice to obtain written assignment of rights in the design (including any copyright and any related trademarks).

The representations filed need to depict clearly the design applied to the product(s). Where used, the representations need to be consistent between the various views (eg, plan, side, top, bottom and perspective).

All too often the representations provided for design applications show extraneous wording, marks or symbols that do not form part of the actual design. For example, representations are often derived from engineering production drawings that include wording or symbols intended to be moulded or formed in the finished product, such as a trademark, the "TM", ® or © symbols, company name, part numbers, safety/certification symbols or compliance information. These would form part of the design registration if left in the representations, and therefore would be considered to be part of the scope of protection. Copy products from competitors that omit such markings may be provided with an unnecessary opportunity to avoid design infringement.

Representations that include shadowed/greyed lines or areas or dotted/dashed lines, or that incorrectly omit features, must be used carefully, and may result in an indefinite scope of protection.

While the Designs Act 2003 allows for an optional "statement of newness and distinctiveness" to help to identify features of particular novelty in the design (similar in function to the "statement of novelty” under the previous Designs Act 1906), there is no longer the leeway previously enjoyed under the 1906 act to include an optional “statement of monopoly” to help to define exactly what features in the representations are intended to be included or excluded from consideration when assessing the scope of monopoly. While there is no clear case law to date, the Australian Designs Registry indicates that a statement of newness and distinctiveness under the 2003 act is not intended to be used to help to modify or explain what is shown in the representations; rather, it can be used to identify features of particular novelty over the prior art base.

Interestingly, the 2003 act allows a single design to be registered for multiple products in one registration, whether or not the products are related or used together (eg, a teaset, a suite of furniture or a canteen of cutlery). However, unlike the position under the European Community designs regime or potentially under the US design patent unity of design requirements, an Australian design registration shall include only a single design, although that design may be applied to multiple products in that single registration.

Consequently, careful review of the intended representations must be made before filing in order to assess which designs and how many designs are shown, and to which and how many products they have been applied. Professional advice can help to determine a filing strategy to provide the most cost-effective strategy while giving the most commercially relevant scope of protection.

Not least, it is vital to establish correct ownership of the design from the original design author(s) before registration, and preferably before filing a design application. Only the following people can be entered in the Register of Designs:

• The creator(s) of the design.
• A person who employs or contracts the design from the creator(s).
• An assignee or person(s) entitled by will or other operation of law.
• The legal representative of a deceased owner of the design.

Incorrect entitlement leaves the design registration vulnerable to invalidity. 

Creators should seek professional advice early in the development of the design that they intend to protect. Such advice not only can provide a strategy for timing of a design application to fit in with product development timeframes, but can also give direction as to exactly what must be shown in each drawing or image. The creator(s) of the design must be identified early and the correct chain of entitlement established. In addition, early professional advice will help with a coordinated strategy for patent, design and trademark protection, which are not mutually exclusive but can be, and often are, used in combination.