Many of POF's clients make use of the designs registration
systems in Australia and overseas to secure valuable IP rights for
their products. This is particularly so in instances where the
physical appearance of a product is of commercial importance.
A product may be the subject of both a granted patent and a
registered design. The patent protects the functionality of the
product, and the registered design protects the product's
unique appearance. It is important to note however, that the option
of pursuing design registration may be available even in instances
where the product is deemed to be not suitable subject matter for a
patent, so long as the appearance of the product is new and
A particularly attractive aspect of the Australian designs
registration system is the cost. The cost to obtain a registered
design is generally far less than the cost of obtaining a granted
Short Application Process
Another useful aspect of the designs registration system, is the
short timeframe between filing of an application and registration.
It is generally possible to obtain a registered design within a
matter of weeks of the filing date, compared to a period of years
often involved in obtaining a patent grant.
The short timeframe is, in part, due to applications proceeding
to registration without first undergoing substantive examination.
Substantive examination of a design application is optional and, if
requested, is undertaken by IP Australia after registration has
occurred. If a registration owner elects to proceed with
substantive examination, and the registration successfully passes
through the substantive examination stage then the registration is
certified. This means that it can then be used as the basis for
pursuing an alleged infringement.
Fast registration can have serious commercial implications for
some registration owners. This is because registration brings with
it publication by IP Australia of the registered design. This can
be problematic, particularly where publication of the registration
pre-dates the intended commercial release date of the product.
Some registration owners (for example, car manufacturers), place
heavy emphasis on the release date of new vehicle models. If you
are concerned with an earlier than desired publication of your
product, we would be happy to discuss the various options for
slowing down the registration and publication of an
Care must be taken with a design application to ensure that the
representations filed accurately and clearly depict the product,
and don't include any extraneous matter that may limit the
scope of protection ultimately obtained.
Statement of Newness and Distinctiveness
It is critical at the filing stage to decide whether or not to
include a Statement of Newness and Distinctiveness (SND) in an
An SND can be important where it is desired to qualify the
drawings to, for example, exclude features not part of the design.
The inclusion of an SND may also be important so as to identify the
new and distinctive features of the product, particularly where the
product is in a crowded field.
Suitable Subject Matter for a Design Application
The Australian Design Act 2003 provides a broad
definition of the types of products for which design registration
is available. Nevertheless, one area of uncertainty has been
whether electronic display screen images are suitable subject
matter for design registration. Because of this uncertainty, there
are numerous registrations on the IP Australia designs register for
electronic screen images, none of which have (up until now),
undergone substantive examination.
Australian design registration 345903, entitled "DISPLAY
SCREEN FOR AN ELECTRONIC DEVICE" and in the name of APPLE
INC., has recently successfully undergone substantive examination
and proceeded to certification. This is the first Australian design
registration we are aware of for an electronic display screen to be
certified by IP Australia. This may indicate a shift in policy by
IP Australia, although we have yet to be advised of such a policy
Certification of this registration may be the catalyst for a
raft of new design applications for electronic screen images, and
may also encourage the owners of existing, unexamined electronic
screen image registrations to request substantive examination of
their registrations. This may be of particular interest to our
electronics industry clients.
Our attorneys can assist you in all stages of design
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).