The Benefits of Design Registrations

Designs have the unique quality of being beneficial IP rights for both marketing and innovation.

Design registrations are granted for the visual appearance of products, where products are broadly defined. That is, ornamental design of an article of manufacture may be registered.

In Australia, currently digitally generated ephemeral images may not be the subject of design rights, but they may be the subject of copyrights. However, in foreign jurisdictions such as the US, aesthetic features of digitally generated ephemeral images may be registered as designs.

Designs can operate in much the same way as trademarks. For example, a particular design that is carried through many different products acts a trademark. Design registrations may also safeguard innovative aesthetic features of utilitarian objects, provided that their visual appearance, not their utility, is the subject of the design right. A component part of a complex product may be the subject of design registrations.

Designs as Trademarks

Design registrations may cover the overall appearance that results from features that set products and marketing tools apart from the competition. To use a term mostly applied to copyrights, the “look and feel” of a product line can be the subject of a suite of design registrations.

A difference between designs and trade marks is that designs registrations expire within ten years of filing - but use is not a requirement to keep it registered. However, in litigation, damages may depend on use to prove profitability. A trade mark on the other hand must be used to maintain its registration or if it is dependent upon common law, its use proves that it exists because it is recognised in the marketplace.

As an example, famously, Apple received design registrations on the shape of its mobile devices, and most particularly, the corners of their devices. The shape of the corners of the Apple mobile device distinguished it in the marketplace, much the same way as trademarks do. In fact, trademark registrations can be issued on devices. In Australia, a famous dog-shaped tailor used by mobile dog groomers is a registered “device” trademark. The crossover between registered designs and trademarks is one that a savvy marketer will consider.

Ornamentation such as fonts and fabric patterns may also be the subject of design registrations. The registrations last for 10 years whereas copyrights last much longer.

In Australia a design registration eliminates the opportunity to claim a copyright on the same feature.  Infringement of a design registration, however, does not require proof of infringement the way copyright requires proof of actual copying and the subject design not being an independently created design. In other countries, a design grant does not eliminate copyrights on the design. Whether to file internationally depends upon a business' goals.

Design Registration to Safeguard Innovation

If a design is dictated by function, then it may not receive design registration. Designs must have had an ornamental intent.  Shapes are often the subject of design registrations. For example, the shape of the iconic Coca-Cola bottle received design registration. It is also the subject of trademark registration, registered in 1960. Below is Coca Cola's first bottle design registration:

Design registrations are powerful tools, as Apple has proven with the shape of its mobile device corners. However, after 10 years in Australia, design registrations are terminated. Beneficially, trademark registrations may continue until renewal fees have ceased to be paid.  For a shape to be trademarked, it most likely will have to have been used in commerce and be recognised by the public, associating the shape with the company.

Less obvious is that design registrations may be granted on component parts of more complex products. For example, the housing of a gear box may receive a design registration. More common, are shapes of products such as automobiles, clothing, jewellery and their parts.

Design Registration Application

A design registration application is simply drawings, typically engineering drawings from four to six perspectives. Alternatively, photographs may be used. The application may include a Statement of newness and distinctiveness. However, such a statement it is not always included.  The official fees for filing a design registration are $250. The costs of preparing the application vary according to the service provider. However, the cost is much less than preparing a utility (standard) patent application.

Secrecy Requirements and Searching

In Australia, it is best to maintain secrecy of the design before filing your design applications, just as you would for a utility (standard) patent application. While there is a one (1) year grace period for filing design registration applications, the grace period is rife with requirements that are best left untested. This means that the design must have been maintained in secrecy before filing an original design application. The filing date simultaneously also starts the clock ticking for filing international applications. It is advisable to request expedited examination and then file internationally at least with the opinion of an IP Australia design examiner. Otherwise, design searches are oftentimes inconclusive and should not be relied upon. The government IP office has access to particularly good search tools so especially for designs, it is better to rely upon a search by an design examiner before filing internationally, which can be particularly expensive.