Intellectual Property (IP) refers to a category of property that includes intangible creations of your intellectual and creative efforts. IP law provides legal protection over these creations. Examples include brands, new designs and products, inventions, and trade marks. For any new physical or creative application of an idea, IP protection of some kind is potentially available.
In the first of a series of articles looking at IP fundamentals and IP issues relevant to you and your business, Kim Nicholson of our Sydney office outlines key aspects of one type of IP protection for new products – registered designs.
Also, some major updates to registered designs have been recently introduced, updating the designs protection system and making it more relevant for you and your business.
What kind of protection do I have for my design?
The external appearance of your product can be protected through designs registration.
A registered design is a type of legal right under IP Law. This kind of legal protection is separate from other forms of IP such as patents (which protects the functionality or operation of the product), trade marks, and copyright. Different forms of IP protection are available for different aspects of the same product, and need to be separately registered or enforced.
Registered design rights apply only to features which give your product a unique appearance. Think of elements such as shape, configuration, pattern and ornamentation.
There are limitations to registered designs protection. To qualify for protection your design must be new / novel, and also be distinctive. Protection may not be available for designs which have been made public or which already exist.
As with any new product or service being developed for release to the market, it is crucial to map out an IP strategy and to be aware of and manage risks around disclosing your new design to other parties.
What other IP protection might be available?
There is some overlapping legal protection between designs, copyright and trade marks.
Copyright may apply to items relating to your new design or product such as drawings or sketches. However to avoid ‘dual protection’, copyright protection is lost when the design or product is commercialised or brought to market through designs registration or manufacture.
Trade marks involve aspects of a new product such as branding, logos and slogans. Trade mark protection can also potentially apply to the external appearance of a product, such as its shape. However this kind of protection is limited where the shape is functional (think the shape of a bottle). On the other hand, functionality doesn’t impact the availability of designs protection, provided the design is novel.
Unregistered designs are not recognised in Australia. If this is the case with your design, copyright, trade marks or other options may still be available.
What new protection is available?
Several key changes to the Designs Act 2003 have recently been introduced (as of September 2021 – and coming into force over the next few months). One of the main changes is the introduction of a Grace Period of 12 months. This substantial reform brings greater flexibility to the registered designs system.
The new grace period means that the use or public disclosure of a new design will not lead to the loss of registered designs protection. In situations where your business or company has created a new design or product, and has inadvertently disclosed the product, you will generally have access to the grace period provisions rather than lose protection. Other advantages include giving businesses options to exploit their commercial advantages around new designs, such as early market testing of new products.
Any Questions? Please reach out
Securing IP protection for your new product or service requires expert advice and guidance. Different forms of IP protection may be available to you, offering various advantages and potential disadvantages.
This article is provided for general information purposes only. If you have specific questions or issues, you will need to obtain advice relevant to your specific circumstances.
For a no obligation initial discussion about your options, please contact us.