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Designs

• What is a design?
• Designs legislation
• What can be registered?
• Registering and protecting design rights
• Infringement
• Designs in the news
• The first Australian design

In IP terminology, a design means the overall appearance of a product. This includes the shape, configuration, pattern and ornamentation which, when applied to a product, give it a unique visual appearance. A product is anything that is manufactured or handmade. Importantly the mechanics of how a product works or operates is not protected by designs law, but may be protectable as a patent.

In Australia, the law regarding registered designs is prescribed by the Commonwealth Designs Act 2003. Australian registered designs are administered by IP Australia.

A design can be registered and certified in Australia, provided it is both:

• ‘new’ - meaning it must not be identical to any design previously published anywhere in the world (including on the Internet), nor any design previously used in Australia; and
• ‘distinctive’ - meaning it must not be substantially similar in overall impression to any design previously published any where in the world (including on the Internet), nor any design previously used in Australia.

Some designs are not considered registrable by law. These include designs for medals, layouts for integrated circuits, Australian currency and scandalous designs.

Examples of Australian designs that have been registered are:

• In 2004, the Albion Cricket Helmet was registered.
• In 1987, the portable cooler was registered.
• In 2000, Speedo’s Fastskin suit was registered.
• In 2003, Holden registered the shape for the Monaro.

The process of protecting a design begins when its owner submits a completed application, the $200 application fee for each design identified by the applicant and representations of the design to IP Australia.

IP Australia issues a design number and filing date from which the owner has a six month period to request the design to be registered or published. Publication prevents others from registering a design, but does not give any rights in itself. Registration gives the owner the right to use, sell or licence their design for a maximum term of 10 years. A renewal fee is payable to IP Australia at the fifth anniversary from filing.

Designs that have been registered in Australia are published in the Australian Official Journal of Designs. Once the design has been published in the Journal, other countries may not accept a design registration as it would no longer be considered ‘new’.

Australian design registration provides protection only within Australia. If you want to apply for registration in other countries, you also need to apply for design registration in those countries.

A registered design must be successfully examined and certified before the design owner can take legal action on grounds of infringement. It is the responsibility of registered design owners to enforce their legal rights (IP Australia does not monitor designs for infringement by others). While registered design matters are often resolved without third-party involvement, disputes can be taken before a court. Proving design infringement can be complex and costly, requiring specialised legal advice.

• The Australian Federal Court recently settled a dispute over the design of plastic fast food plates, both of similar designs but one using a translucent rim. The court ruled the addition of a translucent rim did not release the defendant from infringing a pre-existing design.
  Source: Tu v Pakway Australia Pty Ltd [2004] FCA 1151, 7 September 2004.
• The Criminal Court of Vicenza in Italy sentenced counterfeiters of Rolex and Cartier watches to a year imprisonment and €€1,200 fine for design infringement.
  Source: World Patent & Trademark News, Vol. 5 Issue No. 1, www.wptn.com/design_vol5is1/des_002_vol5is1.htm
• The Federal Court of Australia ruled in 2002 that a design for the ‘Orgasmatron’ head massager had been infringed by the rival ‘Shiver Me Timbers’ device.
  Source: Find Law Australia, October 2002.