Designs:
A guide to protecting your look

1. General Guide to Design Protection

Design Registration

Do you have a product with a unique appearance or design?

Patent protection looks to provide protection for the functionality of a particular product. Design registration on the other hand looks to provide protection for the unique visual features of a product such as shape, configuration, pattern and/or ornamentation.

This guide will through the considerations and requirements for valid design protection here in Australia.

2. Requirements for Design Protection

The Requirements

For a product to be eligible for valid design protection, it needs to tick a couple of boxes:

a) The design needs to be new. That is, it cannot be publicly disclosed anywhere else in the world; and

b) The design needs to be distinctive. The design cannot be substantially similar in overall appearance to another existing design.

3. How much does it cost?

Costs

4. Registration

Acceptance and Grant

It's important to note design registration here in Australia is granted without substantial examination. That is, the design will not be examined for newness and distinctiveness. Provided the design application meets all the formality requirements, you will obtain a registered design.

It's a relatively quick process here in Australia, with design registrations issuing around 2-3 months from the date of application.

5. Renewal

Renewal of Registration

The design will be registered for an initial period of 5 years and you can renew for a further 5 years - totalling 10 years of protection.

The cost of renewal of registration is AU$1050 + GST.

The above is inclusive of our service charge and official Government fees (where applicable).

6. Examination And Certification

Examination and Certification

You can request examination of the design at the time of filing or anytime after it is registered. If the design meets the requirements of newness and distinctiveness, the design will be registered and certified.

You can only take action against an alleged infringer if you have a registered and certified design.

The costs associated with examination include:

a) Request for examination AU$850 + GST

b) Receiving and reviewing any examination report AU$500 + GST

Please note there will be additional costs to address any issues raised in an exam report. The costs will be dependent on the complexities of the issues raised. We will outlined any costs in our review of any report.

c) Finalising certification of the registration AU$350 + GST

The above is inclusive of our service charge and official Government fees (where applicable).

Note: An interested third party can also request examination of your design — particularly if they are looking to invalidate it. If a third party requests examination, they will incur half the examination fee and you will need to pay the remaining half of the fee. If you do not attend to the examination fee, the registration will lapse. The reason for this process because if your design is certified after examination, you stand to benefit from the exam.

7. Got plans for world domination?

International Protection

You can also file for design protection overseas — provided any overseas applications for the same design are filed within 6 months of the filing date of the earlier Australian application. This is called claiming priority. Once this date passes, it will not be possible to file for valid design protection overseas.

The above provides you with small window of opportunity to think about your commercial plans and markets of interest overseas. The overseas application costs will be dependent on the countries of interest.

Please also note, the design application process also differs overseas — with examination being mandatory unlike here in Australia.

We can obtain quotes from our network of overseas associates, as well as further information and advice regarding local filing requirements and practice.