Matthew Lee:                  

Welcome to IP Australia's seminar today on understanding designs. My name is Matt. I'm from the communications area here at IP Australia, and along with me is my colleague, Derek, who is from designs.

 

Matthew Lee:                  

We'll be covering some of the designs and first information about the design system in the session today. Specifically, we'll be going through initial overview of intellectual property, what intellectual property is, and why it's important to you, some of the different types of intellectual property, such as registered intellectual property and ones which don't require registration. Before, Derek will take you through some of the aspects of designs, such as the overlap between copyright and designs, the application process, the filing requirements for the applications, and differences between registration and certification. Before, also quick mention, about how to protect your design internationally, as well.

 

Matthew Lee:                  

For those of you who are new to the GoToWebinar interface, there is a section of your interface which should say questions. You're more than welcome to type in your questions into the interface, where I'll be having a look at it throughout the session, as well. We'll try and keep some of the questions towards the end, but if there is a relevant question which we can post to Derek during the session, I'll verbally ask him to get you an answer for that one, too. Also, if you do have any other feedback or problems during the session, please also type it into the question or chat box that you have in front of you.

 

Matthew Lee:                  

So, without further ado, I'll introduce Derek, who's sitting next to me here. Derek's been at IP Australia for 11 and a half years, with expertise in the trademarks when he was a trainer for about half of that time. He's more recently moved into designs area, as well, and is also looking to become a trainer in that particular field of expertise. So, welcome, Derek.

 

Derek White:                    

Thanks, Matt. Hi, everyone.

 

Matthew Lee:                  

All right. So, let's jump into the session and begin.

 

Matthew Lee:                  

For those of you who aren't aware, we are IP Australia, so the Australia government agency that administers the intellectual property system of Australia. That's mainly for the registered intellectual property, such as patents, trademarks, designs, and plant breeders rights. On top of that, we also fulfil the normal government functions, such as advising policy, and influencing legislation, as well as other international negotiations and agreements, too.

 

Matthew Lee:                  

So, what is intellectual property? Intellectual property is broadly defined as the application of the mind to develop something new and useful. I like to think of it sometimes as being able to, the expression of an idea in some kind of tangible form, and that can be in many different ways, such as a new invention, a brand, a design, and artistic creation, or other things that you might not normally consider, such as the contact list on your phone, for example. So, intellectual property is really all around you everywhere you look, you may just not notice it.

 

Matthew Lee:                  

In terms of the types of intellectual property that we deal with here at IP Australia, so there's other registered intellectual property rights. To obtain these rights, you actually have to put in an application and submit it to IP Australia, where we'll assess it against the relevant legislation and rules before being able to grant your rights in that particular field of technology, or for that particular type of right. This example that we have here on the slide is for a Victa lawn mower, and we have it here just to show you some of the different types of IP and how they operate.

 

Matthew Lee:                  

The first one that we have on the list is for patents. In the Victa lawn mower, when it was developed in 1975 for that particular piece of technology. They developed a recessed cutting disc, which was determined to be new and inventive. So when we're talking about patents, we're talking about inventions, and you get a protection for an invention via a registered patent.

 

Matthew Lee:                  

The next one on the list is trademarks. So if you have a brand, you can protect that via a trademark. In this particular case, Victa has the name Victa, as well as the associated logos. Whenever you have a good or service and you can distinguish that good or service from that of other competitors, that's a type of thing you can get a trademark for.

 

Matthew Lee:                  

Designs is the subject of this particular webinar, so briefly, the designs here with the Victa lawn mower is the particular shape and appearance of the engine that they had for this, that you can see in the picture there.

 

Matthew Lee:                  

Finally, the fourth registered IP right that we deal with at IP Australia is plant breeders rights. Here, the grass isn't actually part of the Victa lawn mower, but instead there is a new variety of plant species for Sir Walter turf, which was determined to be a new type of plant variety, which was able to attract right as a plants breeders rights, as well.

 

Matthew Lee:                  

They are the four types of registered IP.

 

Matthew Lee:                  

There are also other types of unregistered intellectual property which don't require formal registration process. The main ones that we have here are for copyright and trade secrets. Now, copyright we'll also touch on during the webinar, as well, because it does have some interactions with the design system. At the basic level, copyright protects artistic works, literary works, dramatic works, and other types of creations of that nature, and doesn't require registration process to follow. It's automatic and free. So, as soon as you put pen to paper, or as soon as you kind of express that idea in some type of tangible form, then you automatically have copyright for those types of works.

 

Matthew Lee:                 

Trade secrets, on the other hand, is also something which doesn't require registration, but is between particular parties. So the example that we have in the picture here is Coca-Cola, well known for their Coca-Cola recipe, and they've been in business for a hundred years now, so quite a long time. In that time, they've managed to keep the Coca-Cola recipe secret, and the way that they've been able to do that is if you happen to interact with Coca-Cola, and come into contact with their particular secret recipe, you'll have to sign a pretty lengthy agreement to keep it secret. That agreement is called a confidentiality agreement, or in some circles, also a non-disclosure agreement, or an NDA. That requires you to keep that recipe secret to yourself, don't tell anybody else, and if you do break that agreement, then Coca-Cola can come after you and take you to court for breach of that particular contract. Now, that's how trade secrets work. Again, it's an agreement between those two parties, and there is no registration process for obtaining a trade secret. It's literally an agreement between you and those other third parties instead.

 

Matthew Lee:                  

Now, just before we move on to the designs area, I also wanted to give you this example of an Australian invention called the Scrubba Bag. This also embodies some of those concepts we were just discussing and highlighting a moment ago. So, the Scrubba Bag is, as I mentioned, and Australian invention, created by a gentleman called Ash Newland. He's an attorney by trade, but on his time off that he also enjoys going on hikes to exotic locations and various places where he'll be away from civilisation for days upon days. As inevitably happens, your clothes will get dirty if you decide to go on a long hike, as well. To help alleviate this problem, he developed this particular product, which is called the Scrubba Bag, which helps you to wash your clothes when you're on those particular long hikes. All that you do is that you unfurl this bag. It's a thin plastic material. It has a ribbed surface on the inside of it, which allows you to put your clothes on the inside, fill it with a little bit of water or other liquid, scrub your clothes clean, as well, and then wring them dry and help allow you continue on your journey with your cleaner clothes.

 

Matthew Lee:                  

So, this particular product has a number of IP rights also tied up in it, as well, which we can demonstrate. The name Scrubba, as well as the associated logos, again, has a trademark placed on those particular branding elements. There is a patent also for the invention in the washboard surface on the inside of the Scrubba Bag. There is a design, which goes to the diamond shape of the packaging used in the Scrubba Bag. This has a particular advantage that not only is it a unique appearing piece of packaging, but when you go into a camping store, an outdoor store, if you're looking for the Scrubba Bag, you can look immediately for that diamond shaped packaging as opposed to everything else, which is probably in rectangular or square packaging instead hanging off the shelves. And finally there's copyright tied up in this particular product, as well, through the marketing materials, such as the website, photography, and other types of writing associated with marketing this particular product.

 

Matthew Lee:                  

So, I guess to demonstrate this is that when you come up with a particular idea to do something, normally you're doing something as part of your business, or you even developing a product of some kind, as well, is that there's often many types of intellectual property all tied up into one place, so even though today is going to be focusing on design, you should have some consideration about the other types of intellectual property that may also apply in your situation, as well, because by the time that you arrive at business and try to start to sell it and put it on the market, there's often going to be multiple types of intellectual property relevant to you.

 

Matthew Lee:                  

So the broader question is why would you register and why wouldn't you register?

 

Matthew Lee:                  

Our particular role here at IP Australia isn't necessarily to sell you to intellectual property rights, to say that, "Yes, you must go get a patent. Yes, you must go and get a registered design in every single circumstance." Because there'll be definitely reasons why you should or shouldn't depending on your situation. The biggest reason why you would want to register for intellectual property is that it gives you some form of protection against copycats, so people who are going to come in and copy elements of your product, your brand, or your idea, and go off and also market it as their own. So, having a right registered on the intellectual property database gives you some insurance just like house insurance or car insurance, or there's other types of things for a little bit of effort and small fees, you can get something registered with IP Australia, and if somebody does come along later and copies elements of your particular product, or brand, or other elements our business, then you have the option of being able to take some action against it, as well.

 

Matthew Lee:                  

On top of that, there are other reasons why you might not be aware of that you would also register for intellectual property, such as, if you have intellectual property in your business and somebody else comes along and thinks, "Oh, that's a great idea. I wish I had come up with that myself." Is that rather than necessarily copying your idea or abandoning the idea completely, they may decide to offer you or ask you for a license for your particular intellectual property, too. That license can involve royalties, or some other kind of revenue stream, such that not only are you able to then carry on your main business, but you're also getting that additional income from this party that's paying you this license fees, as well.

 

Matthew Lee:                  

On top of that, just having that on the register might open it up to other opportunities to collaborate or partner with other organisations so you can turn those competitors or potential competitors into people who can work with your organisation for better business outcomes as well.

 

Matthew Lee:                  

Now, of course there are some reasons why you may not decide to register and the one that we often hear most often at IP Australia is cost. Cost can be prohibitive. Although that said there are some kind of misconceptions of that cost when it comes to IP rights as well. Often the fees that we charge are not nearly as high as people think that they will be and I believe that Derek will be touching on the fees associated with designs later on, but generally speaking the fees that we charge here at IP Australia aren't particularly high. If you decide to get legal advice or legal help with your application through a lawyer or specialised attorney, then the cost can increase as well.

 

Matthew Lee:                  

So it's something to keep in mind, especially if you decide to enforce your intellectual right later down the track, that process can also get expensive, too. So if you feel that this is something that you can't afford or something that you don't wish to pay down the track at that point, then maybe it's not worth getting a social property protection through registered means instead and you can rely on those other processes such as copyright, trade secrets, etcetera, which don't necessarily have those costs associated with them as well.

 

Matthew Lee:                  

On top of that, you may also decide not to protect your intellectual property because there are other avenues you may want to go down such as releasing your intellectual property through open source or into the public domain more generally as well.

 

Matthew Lee:                  

One example of this is the Tesla car when it was first developed had a number of patents which were taken out on it on the engine technology that they were using for that particular electric vehicle. Those patents were then later released to the public domain. The reason for that was that Tesla came up with a particular strategy, first of all from a marketing point of view it got them a lot of publicity, but also to be able to bolster the electric car industry in the countries that it was designed the enter. Because most people now a'days if you look outside your window or look around what's happening is that they have these old petrol engines in their cars and they'll be driving these vehicles most of the time instead.

 

Matthew Lee:                  

By having more electric vehicles, even if they were competitors of Tesla, you'd also have the following benefits of being able to say, okay, government might increase the investment or the infrastructure associated with electric vehicles, you might get federal private investment as well, and again just from a marketing point of view, just to get the awareness out there that there are more electric vehicles as an option, then it would have this flow on benefits to Tesla. So that was a particular strategy they adopted not to protect their intellectual property rights and again, they're still around and doing fairly well for themselves in that space, too.

 

Matthew Lee:                  

So consider your particular business position when you decide to deal with the intellectual property and remember, sometimes registration is a good idea and there are many benefits to it, but sometimes it may not be necessarily applicable.

 

Matthew Lee:                  

That's our wrap up of intellectual property basics. Again, reminder, if you do have any questions please type them into the question box, but now I'll hand it over to Derek to tell you more about designs. Thanks, Derek.

 

Derek White:                    

Thanks, Matt. I just better mention before we continue that we are having some building works happening here at the moment and you may hear occasional jack hammering and I apologise for that but there's not a great deal that we can do about it. So we'll press on.

 

Derek White:                   

  So as Matt said, I'm gonna talk about designs. In other countries they might be known as industrial designs or design patents, you might be familiar with. I'm gonna show you, they're just called designs, and designer registration is intended to protect designs which have an industrial or a commercial use.

 

Derek White:                    

Designs protect the way things look, so it might be a unique shape, it might be a patent or something. It might be the particular way you've put things together and that comes up with a unique aesthetic of your product. Designs have to be for a product. They need to be a product to manufacture, which is either it can be handmade, it can be mass produced, but it needs to be for a thing that can be made.

 

Derek White:                    

So we'll press on. We've got a few things to cover as Matt mentioned. I'll start off, though, with a bit of a case study. Finders Keepers are a fashion brand based in Adelaide in Australia under the Australian fashion labels umbrella. They make quite a few different products every year and they come up with [inaudible 00:15:48] and they come up with sort of maybe a couple hundred different pieces of clothing and they have to decide which of these that they're going to protect. One of the ways they do that is with a design right, a design registration and they don't register all of them. So as Matt said, you don't necessarily need to register everything you've got, but they give consideration to things they think they're gonna protect their particular style for that season. So it might be a combination of prints and styles, it might just be the prints, or it might be the styles, the shape of a dress or a top or something like that that they use, but they certainly don't protect all of them.

 

Derek White:                    

They found they've been using this for a while and they found out starting out that it was a little bit tricky to get used to the process of designs 'cause they are a bit different from some of the other IP rights that you might be more familiar with, but after a while they got used to ti and now they find it's very easy to register their designs.

 

Derek White:                    

So what is a design? As I've said, it's something that protects the appearance of a product. It's the visual features of that product that are protected and to that question, what are visual features? So that might be the shape, the pattern, the configuration, the augmentation, all those kind of things. What designers don't protect is the way things work. It doesn't protect the size of things. It doesn't protect the name of something or the brand name that you might put on that thing. It just protects the way the thing looks.

 

Derek White:                    

Design registration can last for five years initially and can be extended for another five years for a total of 10 in Australia and it is a two step process. So in Australia, you apply for your registration of your design and we do a series of more or less simple checks to make sure that all the administrative parts of your application are in order. We check that all the representations you provide us are in order and that we can see all the features that you're claiming that you're trying to protect in the design. After that, your design will be registered for five years.

 

Derek White:                    

But there is another part of the process. If you want to enforce your registration, you'll need to have it certified, which is a second step in Australia and that means that we will actually examine it and try to figure out whether it's new or distinctive. So those are the tests that we use for examination. Essentially that means that it's not something that someone else has come up with before or it's not something that you've already published and we'll talk a little bit about that later on in this presentation.

 

Derek White:                    

Again, designs are something that protects the look of a product, but it's not necessarily an artwork. An artwork is, as Matt mentioned earlier, protected by copyright. What you might need, though, is if you're putting your artwork onto a product, you might need a design protection for that. So you can lose your copyright. So if you come up with an artwork, say a sculpture, it'll automatically have copyright in it and that's great. However, if you decide to industrially produce that sculpture and your make more than 50 of them, copyright may no longer apply to it. You may lose your copyright in it because then it becomes a product you manufacture and that's what the designs act is here to protect. So you may need to protect your design or your sculpture using a design right rather than relying on copyright.

 

Matthew Lee:                  

So Derek, you mentioned that if you industrially apply it, that you may lose a copyright in a particular article, especially if it is an artwork or something like that, too. Is there a hard and fast draw about how many items you have to produce before it's regarded as industrially applied?

 

Derek White:                    

Yep. So I believe in the copyright act, it's 50 articles. Industrial applied, that's generally the threshold for it, which is quite low. So if we were talking about the shape of a Coke bottle which can be protected under various rights, that's two cased of Coke, that would be, it's a very small number. Essentially anything you're producing in enough quantity to make money out of it is industrially applied.

 

Matthew Lee:                  

Okay. Thank you. We do have a question which has come in from Linda. We may touch on this later, but she's just asking, do you have to ask for certification when you first apply for registration?

 

Derek White:                    

Yep. That's a good question, and no you don't. So when you first apply, you don't even have to ask for registration when you first apply. You've got a little while in which you can have your design sit ready to go and then when you're ready, you can ask for it to be registered and then we'll do those formalities checks and register it. For certification, you can ask for that any time throughout the 10 years that it may be registered for. Many designs don't even go to certification. Most of them aren't actually examined and so that reduces the cost for Australian designers because they don't have to pay for that second step of the process.

 

Derek White:                    

So you only need to apply for certification. You can apply for it right at the start when you first apply, but you can also apply for it at any time. So what most designers do is they get their design registered and then if they need to enforce it, so if they've figured out that someone's copying their design or potentially infringing on it some other way, is that they will then ask for their design to be certified. You can also have someone else ask for your design to be certified. So if you see a design that is on the register and you don't believe it should be, or you believe that it's in the way of yours and you think that maybe it's not a valid design or that it's not new and distinctive, then you can ask for it to be examined.

 

Derek White:                    

So we call that a third party request for examination, and in that case, the party that requests the examination will have to pay half of the fee and the owner will have to pay half of the fee because the owner is still getting a benefit out of it. They still have to pay half of the fee. So that's a little bit unusual in that sense that a third party can request a certification.

 

Matthew Lee:                  

That makes sense doing that.

 

Derek White:                    

Okay. So designs and copyright, going back to that a little bit, as we said you can generally rely on copyright for artistic creations until they have been industrially applied. So industrially applied is an interesting one. Another interesting concept is artistic works. So there are three sort of main categories of things that can be artistic works and they generally are paintings, sculptures, drawings, engravings, photographs, the usual kind of thing you would expect to see in an art gallery. That kind of thing. There's also buildings and models of buildings which can be an artistic work, and there are also works of artistic craftsmanship, which is a little bit of an unusual term and it's usually that's something that where someone who has a great skill in using a particular material has come up with a design or a product that really emphasises the sum aspect of that design and really takes the craftsmanship of that particular product that it's made from to sort of a new level. It's quite an interesting thing to prove and it's usually something that will be proved in court.

 

Derek White:                    

So that's something that experts will decide, to help the court decide, rather than something that everyone can just go, well, it's a work of artistic craftsmanship, therefore that's what it is. But essentially if a product has been produced with the intention to sell it, it's very unlikely that you can rely solely on copyright protection. This is where designs come in.

 

Derek White:                    

One way you can help to protect it is, as Matt showed a couple of examples earlier, it's not just designs or just copyright or just trademarks or just patents. You can use all of these things together. So a designer might use their name as well as relying on the designs and copyrights, so they might also apply for a trademark to protect their name. So for example, if you search Google, for example, for replicate David Trubridge lamps, you're gonna come up with some. However, if you protect the name David Trubridge or your name as the designer, it makes it very difficult for people to search for replicas of your particular style because they would be somebody else who's advertising that can't be using your name or your trademark to advertise their own thing as a replica of your work. Whereas they might have made a design which is different enough where they might not be infringing on your design. So trademarks and designs can work very well together to protect your product.

 

Derek White:                    

So we'll get into a couple of examples of what registrations might loo like. You might have all seen this one before. It's Dyson's handheld vacuum cleaner. And you've probably seen it, you've probably seen ads for it and know that one of the big parts of it is their cyclonic technology which sucks the air in and does particular things to it. That's not the key for a design. For a design, all we care about is what it looks like. So in this case, this was their application and they've just shown a number of different angles showing what the product looks like. They haven't told us how it works. They haven't told us what it's made of, how big it is, or any of the things that might [inaudible 00:25:54]. All they've shown is what it looks like and this is ideal. This is what we want in a designs application. Just what the product looks like. We don't need to explain any of those other things and in fact if you do put those explanations in, we'll probably ask you to remove them because they're extraneous to the design.

 

Derek White:                    

To contrast that, this is not a design. This is Bodum and this is a trademark. So it's just a logo. Whilst logos can be applied to things, this is not a product. So unlike the vacuum cleaner, which is a product, a manufacture, this is just a logo. You can certainly stick this on things and it might be part of a design, but on it's own, it's not capable of being registered as a design. If you did want to register a logo, trademark is the path that you would want to go down for that.

 

Derek White:                    

However, once we've got that same trademark onto a product, it can be registered as part of a design. So in this case, it's for a barbecue, and again, they've shown us some nice, clear drawings of what the barbecue looks like. They've given us very, very simple explanations. Perspective view, front view, rear view, top view, all that kind of thing. But they haven't explained how it works. They haven't been referenced in the trademark. They've just shown us how it looks and that, again, is ideal for the designs application.

 

Derek White:                    

You don't necessarily have to provide us with really high quality drawings like this. You can sketch them. Or rather, you can draw them if you're pretty good at drawing. You can send in photographs. We ask that they would be clear without other things in the background, and if there's an issue with it, there might be a bit of back and forth between us and the applicant just to make sure that we're only capturing the important parts of the design.

 

Derek White:                    

So the benefits of registered design. So getting your design registered gives you the exclusive right to commercially use it, license, or sell it. It can be a really valuable asset. Like Matt said earlier, you can be carrying on with your main business while someone else who has licensed your design can be doing all the hard work of producing it and selling it while you continue to design potentially other things if you've got a good licensing agreement set up. That can be a good source of income. It also gives you a legal right to stop others from using it after you've had it certified.

 

Derek White:                    

So registration is good and it can be really useful to put people on notice, because people do look at the register. They will look at our register, they'll search it and see what else is out there and if they see something that's really close to something they might be coming up with, well maybe they'll think twice about coming up with something that might be similar. Or they might say well, we had this first, and they might request certification or examination and then that design will be examined and that's the third party thing. Because if they do manage to show that it's not new and distinctive, or that they request examination and we find that it's not new and distinctive, that registration will be revoked. Once it's found to be not new and distinctive, the owner has about a six month period to overcome any issues, and if they can't, then the registration will revoked and it will no longer be protected.

 

Matthew Lee:                  

Does that mean that if my design right which I've had previously registered and I've already started manufacturing and selling my products on the market, do I then need to stop selling my product after that?

 

Derek White:                    

Not necessarily. Design right, like the other IP rights is not a license to go ahead and use it. It is essentially protecting you from other people copying your products. But in the designs case, if it's not a new and distinctive product, then the legislation says you don't get to exclusively use it.

 

Matthew Lee:                  

Yep. So it just means that so I can continue carrying on my business as normal, it's just that I then can shut out the market just for myself and there will be other competitors with potentially similar products which look similar on the market in competition with mine as well.

 

Derek White:                    

Yep, that's right, and similar to a design is usually the exclusive right to use and exploit something for a short period of time in exchange for putting that out there into the public domain where people can make other sort of inventions or designs that may be based on yours, but it takes a next step. It takes another step.

 

Matthew Lee:                  

Great. Thank you.

 

Derek White:                    

So some of the criteria for registration, that slide's not quite right. So for a design to be certified, it should say, it must be new and distinctive. For registration, like I said, all we do is make sure that all the formalities are in order, which is the ownership, the designer name, all those kind of things and make sure that the drawings or the photographs, the representations of the design are sufficient. For it to be certified, it needs to be new and distinctive, which means that new means that something that's identical mustn't have been published before the date that you applied for your design. So if you apply today and you published something on your website yesterday, and we find that, then we'll decide that your design is not new.

 

Derek White:                    

If it's not distinctive, that's a little bit different. That means that it must not be substantially similar in overall appearance, or overall impression rather, to a design published prior to your date. So it's really, really important that if you're going to apply for a design right that you keep your design secret. You don't publish it until you apply for it.

 

Derek White:                    

So this is the number one area where applicants fall down is that they pre-publish. So they get something out there, they put it on their website, they put it on a crowd funding site, put it on Facebook. Somewhere on the internet they will publish it. Here's my thing, and then they'll go oh, this is gonna be big, or this is gonna make me money, I need to apply for a design right. In Australia, if you pre-publish at all, that will invalidate your design once it gets to examination stage. Some countries do have a grace period of six, possibly 12 months but in Australia it's very strict. There is no grace period. If you publish before the date you apply, at examination, your design will be not distinctive.

 

Matthew Lee:                  

So you mentioned, Derek, that is a very important requirement that we have to have a design to be new and distinctive as well. Does that only apply to other designs which have been publicly available or published here in Australia or is that going to be anything worldwide?

 

Derek White:                    

It's anything worldwide. So essentially we searched not only the Australian register, we search international registers for designs. We also search the internet more broadly. We spend quite a lot of our time on Facebook, on Google, on YouTube. It sounds cushy, but what we're actually looking for is similar designs to the one that we're examining. So if we can find it anywhere and it's got a date and that date is earlier than the application date or the priority date, then it's gonna be a problem for that designer.

 

Matthew Lee:                  

I guess using those tools, you mentioned before, such a social media and YouTube, and just the internet in general, so it sounds like that if you are a designer, so people who happen to be on the webinar now at the moment and they want to do a search themselves, maybe that's a good place to start.

 

Derek White:                    

Yep, that's an excellent way to start and we'll talk a little bit about that a bit further on, I think.

 

Derek White:                    

So essentially, if you are coming up with a design and you are thinking about registering it, go on to our website. You can go and search the designs database, you can search the trademark database, you can search designs databases from different countries around the world, and more broadly. Search Google, search Facebook, search YouTube, search Amazon. Look everywhere you can think of to see if someone else has a similar design to yours.

 

Matthew Lee:                  

No problems. Okay, we've got a few questions coming through, so we might just quickly address these as well.

 

Matthew Lee:                  

So Andrew just asked, so we can register a current design, but we can't certify it? I think it's not so much that you can't certify it, but it's an elective step that you can take afterwards. Is that right, Derek?

 

Derek White:                    

Assuming that Andrew means that if you've got a design that's already out there and you apply for it, it can become registered, yes. But then you or anyone else, if you or anyone else apply for it to be examined, and we find that it's been published before you've applied for it, your registration will be revoked. You will no longer have registration.

 

Matthew Lee:                  

And that's again, because of the strict rule because it has been published previously as well and therefore your design isn't knew.

 

Derek White:                    

Yeah. So not only will it not become certified, the actual registration will be revoked.

 

Matthew Lee:                  

Sure. Then we've also got a question from Donna saying, how long does it usually take to do your searches for certification?

 

Derek White:                    

Like many things it's how long is a piece of string? Some will be for things that a really specific, we can find a very particular area of the internet that we can search, or in the literature that we can search, it might not take long. Generally I think roughly a day that we usually spend searching to see if something is new and distinctive. It can be shorter and it can be much longer.

 

Matthew Lee:                  

Okay. The final question that we'll address just before we move on as well is that Matthew is asking, do we need to file a separate application for any country, the same as patents?

 

Matthew Lee:                  

So we do have a slide at the end of the session today which does talk about how to protect your designs internationally. So we'll address that at that particular [crosstalk 00:35:58] as well.

 

Matthew Lee:                  

All right. Let's keep going.

 

Derek White:                    

So just to reinforce, just to really hammer that point in is do not publish or disclose your design before you apply for the designs registration and even if it's you, even if it's your website or it's you that's published it, that will still stop your design being new and distinctive.

 

Matthew Lee:                  

Okay, I guess to [inaudible 00:36:22] that particular point in the next slide which says exactly the same thing as well.

 

Derek White:                    

So I might be a little bit in front of the slides, but essentially that's what we do. That's the main issue that people have with their designs and it's either that they or an employee or someone that they've spoken to has published before they've applied and then they're not going to get it.

 

Matthew Lee:                  

And I guess I imagine that the same thing would also apply, it doesn't matter the context of it, you have to enter a competition and you win the first prize of the competition and also then get it published as part of that publicity as part of that too. Are there going to be any exceptions for situations like that?

 

Derek White:                    

There are some exceptions and they're very rare, but they mostly involve trade shows where you might be showing something off at a trade show, but those are very specific examples. The main thing is don't publish it beforehand. Or if you're talking to someone, you're looking for funding, you're trying to get funding for your design, Matt talked about non disclosure agreements earlier. That might be a really good way to talk to people, a really good thing to pursue if you're talking to someone about your design. You don't want someone else to publish it or to let your design out before you apply for it.

 

Matthew Lee:                  

So best practice though is just keep it secret as much as possible, get your registration in, then after that then that's the time when you can decide to get it published as well.

 

Derek White:                   

Absolutely. The day you put your registration into IP Australia, go nuts. You can get it out there as much as you like.

 

Matthew Lee:                 

All right, you heard the message.

 

Derek White:                    

Okay, so some more tips, apart from searching, you have to figure out if you've got a design first. So have a think about what your product is. Have a think about what the important parts of it are. If the aesthetics or the visual appearance is one of the important parts, it's likely to be something that's, and it's a product that can be made, manufactured, it's likely to be something that can be protected with a design right.

 

Derek White:                    

We have quite a bit of information on our website to help you out, figuring out if you have a design and I would encourage people that aren't sure to have a look at that. It's under ipaustralia.gov.au and you'll be able to click through to the designs parts.

 

Derek White:                    

Other things are is check your registration or check your thing against everything else. What we call the prior out field, it's essentially that's come before you. If something is really, really similar to yours, that could a problem. So you want to be looking in all those places I mentioned, on the registers of our country and other countries and also just the internet, magazines. Anywhere where your designs or things like your design are likely to pop up, that's where you should be checking.

 

Derek White:                    

The other thing to do is you might need to get drawings done, so if you're not an artist, and I certainly am not, you might need to employ someone or engage someone to do some drawings for you if you don't want to photograph it or if you haven't made prototypes that you can't photograph yet, you might need someone else to do some drawings. So again, non disclosure agreements or some kind of contract that people are not going to publish or divulge your design are really useful.

 

Derek White:                    

Once you are ready to apply, again, search and keep searching to make sure that if you search six months ago and there's nothing out there like yours, search again. And now you're ready to apply, search again. Make sure it's still the case that there's not something out there that's identical or substantially similar to yours.

 

Derek White:                    

Develop your strategy. As Matt was saying earlier, there's a whole sweep of IP rights. You don't necessarily need all of them, sometimes you do. So the example of the Scrubba bag was of a experienced patent examiner who really understood the IP rights systems and covered it off really strongly. So he really tied up his rights using the various different avenues.

 

Derek White:                    

And then, submit your application. So you've got everything in, that's when you apply. You've got all your drawings to us, that's when you can then start, that's when your rights will start from the date that you applied to us. So once you've got your application in, then you can start releasing your design, you can get it on your website, you can get it on Facebook. If you've got videos, get them on YouTube, get it out there, that's when you want to start marketing. But again, please don't do that before you've got your application in.

 

Derek White:                    

So at the application stage, you also want to be thinking about whether or not you wish to request registration. Most people do, but there is another route you can go down in Australia is that you can request simply publication of your design. So in that case, all we will do is put your design, once we've checked the formalities, we'll make that correct, we'll put it on the register as published. That means you don't get any rights in it, but if anyone else comes along later for something that is substantially similar to or the same as your design, they won't be able to have theirs certified because yours will be published before theirs and it will block that.

 

Derek White:                    

It's an unusual route to go down, but it is an option. We get very, very few requests for publication. Most people want their design to be registered so that they do have the rights in it.

 

Matthew Lee:                  

Just before we go on as well, there's just another question, which is coming from Donna.

 

Matthew Lee:                  

So she's asking, do you need drawings of specific angles and is there a minimum number of drawings or angles that you might need to submit?

 

Derek White:                    

Yeah, not really. What we need is to see the visual appearance of a product. So it's usually good to have something from most angles. 'Cause that can really help the examiner see what the thing looks like. It can be very difficult sometimes if we only get one view. So it can be really useful to put more than one in. So those examples I had before, they were the really common ones. It's sort of front, back, top, bottom, left and right. Those are the sort of basic angles. Most people also do a perspective view, which is usually from the front and a little bit above so you can kind of see, it gives a bit of a better idea of what a product might look like. So having all those are really useful, but they're certainly not required.

 

Matthew Lee:                  

And as an examiner, if you ever get an application which comes through, which say only has the top perspective of it and no further information, do you then request that the application, do you send some correspondence back to say we need more information?

 

Derek White:                    

It depends. If we think that all the visual features that the applicant is claiming visible in the drawing, then we won't request anything else. If there are further visual features that the applicant thinks they're getting protected, and they're not in the drawings then it's very unlikely that those will be protected. So essentially your protection is for what's in your design drawings you submit to us.

 

Matthew Lee:                  

So perhaps the takeaway lesson is that if you are applying for a registered design, make sure you include those relevant perspectives so you can show all of those important features of your design and because if you don't include those or clearly include those, then you're not gonna get protection for those.

 

Derek White:                    

That's right.

 

Matthew Lee:                  

Good.

 

Derek White:                    

So we've talked a little bit about this, after you file your application, we will check the formalities. Once everything's okay, we will send you a notice. You'll get a design number and the filing date, which is the date you have applied and you'll get some information about your application. It's really important to check this, make sure there are no areas of discrepancies. Like most places we have various computer systems and things can get lost in translation sometimes between those systems. So it's important to check those, and if there's any issues, get back to us so we can fix them up as soon as possible.

 

Derek White:                    

We also check the formalities, like I said. Which is essentially check that you have provided correct name, address, address for service, which is somewhere we can send documents to. We also need to know the name of the designer, we'll need to make sure that representations are okay, but essentially it's just making sure all the administrative ducks line up so that we can contact you or other people can contact you about your design once it's registered and published.

 

Derek White:                   

There's a bit of a graphic that's on our website. You can go through this on your own time. It's very easy to find on ipaustralia.gov.au. It's just sort of a bit of a walk through on some of the things that I've mentioned and some potential time frames around that. I'm not sure how accurate they are. It can take people a lot longer than six weeks to come up with their idea and to get it all the way through to [inaudible 00:45:33].

 

Matthew Lee:                  

I'll also mention as well that this session is also being recorded, so you will be able to obtain a download recording of this particular webinar after we've concluded here today as well so that you will be able to come back to it, go through the presentation and review everything in your own time as well.

 

Derek White:                    

And I'll just answer another question.

 

Matthew Lee:                  

So Linda asked if you publish only, so you'd like to do the publication step, can you then change your mind and register later, certify later to protect your rights?

 

Derek White:                    

No, because you will have pre-published a publishing.

 

Matthew Lee:                  

Right. So even if you decided to go down that publication route-

 

Derek White:                    

You're giving up the rights to your design.

 

Matthew Lee:                  

That's it. That's the end of the road.

 

Derek White:                    

That's just it. Essentially you're just putting it out there so no one else can get it.

 

Matthew Lee:                  

So you need to make that decision at that particular point in time about what you're going to do with your registration.

 

Derek White:                    

Right. That's why it's so unusual for people to go down the publication only route. Usually, I would say 99.99 of our applications are for registration. I have seen a couple for publication but they're very, very rare.

 

Matthew Lee:                  

No problems.

 

Derek White:                    

Yeah. So some of the things with registration, the owner needs to be a person with legal personality. That can be a company or a person. It can't be a trust. The designs act is quite specific about trusts and the mention of a trust should be made in the ownership. You also need a product name. This is essentially a generic name which will match the representations of the product you provide. So it should be quite simple. If you've designed a chair, call it a chair. If you've designed a table, you call it a table.

 

Matthew Lee:                  

So for this product name, I shouldn't be putting in my fancy brand name that'll come up for this particular product?

 

Derek White:                    

That's right. If you've come up with an electronic device that does all sorts of interesting things, your product name is not iPhone, your product name is a mobile phone or a smartphone or an electronic device. Something like that. It's a generic name so that people can use the search for your goods on the register.

 

Matthew Lee:                  

So when we say product name, is this pretty much the same thing as the title of my design application?

 

Derek White:                    

We don't really use title. Product name is the name of the product. It's what your product is.

 

Matthew Lee:                  

When you apply for the design, this is the thing that you submit. We did have a question from Donna who was asking about the title of the design application, so this is what we're really referring to as this is the product you're applying for the design right for.

 

Derek White:                    

Yeah. It can be. It can be a little difficult if people use really obscure product names. I don't know why they would because we're gonna search the generic names of the product no matter what. So yeah. Be generic with your product name.

 

Matthew Lee:                  

Okay.

 

Derek White:                   

Also, you need to have address of service in Australia or New Zealand. Somewhere we can send the documents to, and all the representations must be consistent, so this is really important. So if you're sending in more than one representation of your design, you need to be consistent across those representations. If you've got sort of two different versions of something and you put those in your design, we will probably say you've got more than one design because if they look different, then changes are they're a different design. So be consistent with your designs.

 

Derek White:                    

If you do have that case where we say there's more than one design, you will have the opportunity to exclude some of those designs and they can go into their own application and there's various ways of doing that which is beyond the stroke of this presentation, but you can certainly then if you apply for five designs, you may end up having to have five different applications and they can all be based off the first one which may have intentionally or accidentally have five designs in them. But all the details, pattern and colour, dotted lines, a lot of people like to use dotted lines to show things that are or are not included in the design, but yeah, they need to be consistent.

 

Derek White:                    

Again, that's registration in a nutshell and it lasts for five years. Coming after five years, you can choose to extend it for another five years and if you don't, your registration will cease. If you decide that you wish to pay the renewal fee, you can do that and it will be protected for another five years.

 

Derek White:                   

At any stage [inaudible 00:50:16] the sort of right to use your design and the exclusive right to use your design, but if at any stage you need to enforce that, you will need to request examination and get it certified. So only once a design has been registered can you request for it to be certified. Then we'll do the tests to determine whether it's new and distinctive that I spoke about earlier. Once it's certified, your design right is then legally enforceable. You can take people to court based on what's in your design right and do all the other reinforcement things that you need to do.

 

Derek White:                   

 It's a little bit unusual, so for example, with trademarks, once you apply and get it registered, that's it. You've got it. Whereas with designs, you can apply and get it registered. It's not really until you get it certified that you fully got the design that can be protected.

 

Derek White:                    

Interestingly once your design is certified, someone can request that it be examined again, which is a little bit unusual, but that's certainly the case in Australia. So if someone, a third party comes in and says we would like to request examination of this certified design, and they pay half the fees and then you'll be required to pay half the fees, we examine it again. Usually that happens when someone comes up and sees a certified design that's the same as or very, very similar to something they've done and they published it before the date of that design. In that case they'll usually provide evidence to that effect to show that they think that this design has been disclosed before the application date. We'll examine that, we'll do a complete reexamination. If we find that is the case that it was published, the design will be [inaudible 00:52:05] even though it was certified. You can lose your certification after you've already applied.

 

Derek White:                    

I'll quickly move on to international protection.

 

Matthew Lee:                  

I think we have had some questions about this as well. So in terms of, so we've talked a little bit about the design registration certification process here in Australia. Does that give me any protection in other countries?

 

Derek White:                  

No. Like most IP rights, registration is specific to each country including Australia. So in Australia, you're protected in Australia. If you want protection in New Zealand or China, the US, UK, anywhere, you have to apply in each of those countries. So you can apply directly to each of those countries and it's probably a good idea to have someone on the ground there who knows the relevant rules.

 

Derek White:                    

IP Australia can't really help you much with the laws of other countries, but we do have some information on our website that's general about what you can do and how you can go about that. If you're going down an international route, we will probably advise that you at least discuss it with an IP attorney who's experienced in doing international designs applications. It can be tricky. Every country's very different. Australia has quite a different system to most other countries in the world.

 

Derek White:                   

You can, however, in most countries claim the date of your Australian design application under the Paris Convention. Australia's a party to that as are most countries in the world. Essentially that means if you apply in one country that's a party to the convention, if you apply within six months in another country, you can claim your original date. So it can make your date be a little bit earlier, up to six months earlier than you might otherwise get if you were applying in different countries.

 

Derek White:                    

Sometimes you will need a certified copy of your Australian application, which we can provide and you can get in touch with IP Australia via our website for that. And if you want to know what countries are a part of that Paris Convention, there's a list on the World Intellectual Property Offices website at www.wipo.org, and there's a list on there.

 

Derek White:                    

Okay, so hopefully this will never happen. Because if you do everything right, you get your design registered, possibly even certified, you've put it on the public record that you're claiming this design, hopefully someone won't copy it or come up or even accidentally come up with something similar, which you still have a protection for under that copyright. So if someone copies your design, again, the best thing to do is probably talk to an IP professional.

 

Derek White:                    

So at IP Australia, we look after the registration of intellectual property. We don't really get involved in enforcement. So we can give you a little bit of information but we can't really give you any advice about how to go about enforcing it. That's something that an IP attorney can do. They can give you that business and legal advice and it can be really, really helpful in deciding whether or not, and what strategy you can use if someone's copied your design. So we have a list on our website that you can have a look and we have a part of our website that's a little bit of information on engaging an IP attorney. It's very much geared toward patents but it's still useful for designs and trademarks because it can be real useful to talk to someone who's used to dealing with infringement. They will be able to help you decide it's whether to send a cease and desist letter, or whether all the way to a court action. But essentially the first thing they'll probably suggest is you get your design certified.

 

Derek White:                    

I can tell we're running a little bit late. We're getting close to the end of the hour. I'm happy to look at some of the questions now, if you have any more questions. Please put them up and here's our contact details. There's plenty more information on our website and you're always welcome to call us on the 1 300 number there. Everyone at IP Australia loves talking to our customers and we're really happy to take questions.

 

Matthew Lee:                  

Okay. So one other thing that I'd point out as well that we've also recently released on the IP Australia website is a package called IP for Digital Business. Now in particular there's a section on the day which does have slightly more information about what to do if somebody infringes on your design, especially if they happen to be on the internet or overseas as well. So there are a few steps that you can take, depending on the situation, as well as such as being able to again, send them some correspondence to prevent them from continuing to sell or market their product. Potentially contacting the marketplace or the web hosting provider as well so you can possibly stop them from marketing their products on those particular platforms as well, as well as a few other tips.

 

Matthew Lee:                  

So if you happen to be in that situation, I encourage you to have a look at that particular package. Again, it's called IP for Digital Business and is available from our IP Australia homepage currently as well.

 

Matthew Lee:                  

So I think we've covered a majority of the questions throughout the session as well. So just to go back to one from Matthew who was asking about whether the design can just be the packaging of a particular product, I assume, as well as does he need to say what's going to be in the packaging?

 

Derek White:                    

Potentially. So yes, absolutely, the design can just be the packaging. So in the case of the Scrubba Bag, it was the triangular or diamond shaped packaging that was the subject of the design. It can help if you say what the packaging is for. Sometimes we need to know that so we can correctly classify it under the classification system. If that is the case and you haven't given us enough information for us to register it, we'll write out to you and ask you for more information.

 

Matthew Lee:                  

What about the material that the packaging or the product is made out of? Is that relevant at all?

 

Derek White:                    

Almost always no. So design is just for the visual features. We don't really care what it's made from. If what it's made from gives it a particular appearance, then it might be relevant, but in most cases, it's not relevant.

 

Matthew Lee:                  

Generally speaking, if the material is specifically chosen for a particular reason as well as especially for a functional reason, then perhaps maybe a subject of a patent instead of a design?

 

Derek White:                    

Yeah, that's right. So again, it has nothing to do with visual appearance, then it's not relevant for the design application.

 

Matthew Lee:                  

No problems, and we've got just a last question here from Tony as well who says, from experience, is it not true that the reality of the entire experience boils down to how much money one has, such as finding funds to protect your design registration certification because the legal cost of defence are astronomic?

 

Matthew Lee:                  

So we can't be specific about how much it's going to cost because it highly will depend upon the situation as we mentioned before, but in general, yes, sometimes it can be an expensive process by the time you decide to take action. Especially for involved specific litigation through the court system. However, as I mentioned before, we do have some resources available on the IP Australia website to go through some of the steps if somebody has infringed on your works that you can take such as being able to come to an agreement outside of the court system with the particular party involved, or perhaps being able to get the product de-listed from a particular marketplace through other means as well and those can often be cheaper options that you have accessible to you which isn't going to cost you the astronomical amount.

 

Matthew Lee:                  

Finally, don't also forget that sometimes that if you have those registered IP rights and you do open up a channel of correspondence, that it does, again in some circumstances, allow you to negotiate with the other party to come to an agreement which is mutually beneficial to you both, such as the form of the license or some other kind of agreement as well. But you are right that yes, in some instances, it can be an expensive process if you decide to enforce your design and that has to [inaudible 01:00:26] your thinking when Derek mentioned before that you are coming up with your IP strategy about how you're going to break your design and your product more generally as well.

 

Derek White:                    

Understand that in my experience it tends not to be the case that the party with the most money wins. It's reliant on the validity of the rights. So if you don't have an IP right, you're unlikely to be able to defend it. If you do have a registered or certified IP right, it makes it much, much easier.

 

Matthew Lee:                  

And not only that, the only way that you'd ever get that option is to have that registration in the first place as well. So if by having something which is on the register, it allows you to pull the trigger effectively, decide if you want to take action or not later down the track, too.

 

Matthew Lee:                  

So that seems to be about the time that we're allocated and I think that's all the questions as well. So I'd like to say thank you to Derek for running the session today about designs. It was definitely very informative from my perspective and don't forget that we will be handing out a recording of this webinar after the conclusion of this session, too, which you'll be able to download and we will e-mail you a link.

 

Matthew Lee:                  

If you have anymore questions, please contact us via the slide details that we have currently up or at communication@ipaustralia.gov.au and we'll be able to answer your queries there, too. But thank you for joining us and we shall see you at hopefully some of our webinars which will be launching again in the next new year, and thanks very much. Catch you next time. Bye.

Last updated: 
Wednesday, February 27, 2019