What are design rights?
You’ve got a product, it’s new, unique and you want to make sure no one else copies it. Where do you start? Firstly, keep it secret until you decide how you want to protect it.
A registered design will allow you to protect the shape, pattern, configuration and/or decoration of your product, but it must be original.
What you'll learn in this webinar:
- The difference between copyright and design
- The different types of design protection
- What to do before you apply
- How to apply for a design
- Registration vs. certification.
Understanding designs
This webinar is hosted by Veronica.
Veronica:
Welcome to part one of our design webinar series designs 101. My name is Veronica and I'm part of the communications team at Intellectual Property Australia. We'll get started shortly but in the meantime just a reminder to everyone that this session is recorded. Can we please ask that you keep your cameras off and stay on mute during the presentation. We will answer any questions at the end. But please feel free to pop your questions in the chat in the meantime.
Firstly I’d like to introduce our two speakers. We have Derek White. Derek joined IP Australia in 2007 and has spent 10 years as a trademark examiner. During that time he was involved in most aspects of trademarks, particularly international trademarks, and training, new trademark examinations and for the past five years has been a design examiner with his focus again on training new examiners and also updating the new designs legislation.
We also have Sarah Patton who has worked with IP Australia since 2017. She is currently a designs examiner and has also worked in trademark examination and the public education and awareness and strategies. She has a particular interest in Indigenous Knowledge intellectual property issues and educating customers about IP education. So just a reminder this session is recorded and we ask that you pop any questions you have throughout the presentation into the chat. And I will hand over to Sarah now.
Sarah:
Thank you Veronica and hi everyone. I'd like to start off just by acknowledging that Derek and I are coming to you today from our office at IP Australia which is on Ngunnawal Country and I’d just like to pay my respects to elders past and present and also to the lands in which you're dialing in from and pay my respects to the elders of those, the traditional custodians of those lands as well. I think we're just going to get straight into it. What is intellectual property?
So for those of you that are not quite sure, IP is essentially describing the application of the mind to develop something that is new or original. So this can be many different things including new inventions, brand new design or an artistic creation. At IP Australia specifically we deal with the four registered rights so those are trademarks, designs, patents and plant breeder's rights. So we offer, we deal with the examination and registration of those rights but we also do things like these webinars. We deal in, you know, educating people about IP and how it works in Australia. And we also provide advice on policy to government and also, you know, trade agreements and international, stuff like that. But today we're just going to be talking about design rights and what exactly a design right is and whether or not it's the right kind of right for you.
So um we'll talk a little bit about copyright towards the end because there is you know um an interesting sort of interaction between the two rights, um but we'll briefly touch on that um. We will focus on what we mean by a design right and how it might help you. So essentially a design right um, so the word design I think has a lot of meanings for a lot of different people and a lot of broad meanings and I think it can confuse a few people.
When we talk about a design in the context of an IP right, what we're talking about is something that protects new and distinctive products. So that's things like as you can see on the screen uh shape, colour, configuration, pattern. These are visual features of something so we'll talk a little bit more later about what a design isn't, but, you're getting protection for what the product looks like. We don't care what it does, we don't care how it works, it's what it looks like. If that is new and distinctive and that's something you expect that's what a design right will help you with.
So these are just some examples of registered design rights. So you'll see, you know, you can get a design right for quite a lot of things — from things that you wear, things that you drive, things that you eat. It's really sort of a broad kind of protection but it is for that visual appearance of those things. So design rights um again are very specific right and like I mentioned briefly there's a lot of things they don't protect. So we don't care about how your product works. That's more going to be covered what it's made of, um or the brand name or the logo. All of these things simply going to be covered by other IP rights and it may be something you want to consider as part of your wider IP strategy — how a design right may fit into that.
Another important point I think is that design rights don't exist automatically. So you may be aware that in Australia copyright is an automatic right. A design right is something that you need to apply for to gain protection and you need to meet the legal requirements to do so. Um it's also good to note that there are fees involved in applying for a design right so that's something you should consider. And protection lasts for a maximum of 10 years so if you do have protection, it can give you the exclusive right to determine how your design is used and by who.
I’ll just hand over to Derek to go into a little bit more detail with some examples.
Derek:
Hi everyone. So some of you may be familiar with the product on the screen. It's one of Dyson’s handheld vacuum cleaners or it's a part of one of the Dyson's vacuum cleaners. It was filed and registered in 2013, certified in 2014. I’ll talk a little bit more about those terms shortly, and it's a good example of how designs are concerned solely with the visual features of a product. Design is a design applied to a product. Without the product there's no design. Um creates all kinds of different innovative technological features such as Dyson’s famous cyclonic action however, this application doesn't show any of that. This application just shows the drawings of what the product looks like.
It's very simple labelling, it's just sort of different views. It's top, bottom, left, right, things like that. And that's the kind of thing we want to see in a designs application. If you add additional information, that can be an issue and we might have to write out to you and ask you to remove it. So we quite often get people adding, you know, arrows pointing out various different parts of the product, but that's not something that designs are concerned with. So we often have to write out and ask people to remove that or any other data that might be in the application.
So this one's really nice. It's very simple. It's a reasonably complicated drawing, but it's nice, simple representation showing everything in the product and very simple labelling.
So the next one we've got, whilst the designer might have created this logo, they most certainly did, on its own it's not capable of being registered as a design right. This is because it's not applied to a product. So as I mentioned just before, a design is a design in relation to a product.
For this one, if the intention is to protect the brand name 'bodum' that might be something that a trade mark can cover. In this case you can see the registered symbol, which indicates it is a registered trade mark. But for this example, without a product, this is not enough for a design.
But when we put it on to an actual product, in this case a BBQ grill, it becomes something that can be registered as a design. So I'm just trying to show some things that are very common mistakes that people come up with. We get quite a lot of people just applying for logos and wanting it to be their design. Designs have to be a product so this grill could have been registered with or without the 'bodum' name on it. But the 'bodum' name can't be registered without some kind of product.
Again, this is another nice example of how to apply for your design. It's just showing the drawings, just showing the different views — front, back, top, bottom perspective view, and without any extraneous matter. It's only showing what the design is and nothing else.
You don't have to use drawings when you're applying. You can use photographs. But they need to be clear, they need to be showing just the product with a contrasting background. We don't want to see your desk covered in all sorts of other things. We don't want to see the rest of your warehouse or your shop. We just want to see the product as clearly as possible, with as little else in the photograph as possible.
We'll move onto what happens after you file your application. So shortly after you've filed your application, we'll track that as met minimal filing requirements and determine what fees are payable. If you haven't paid the fees, we'll ask you to pay them. If you have paid them, it will move on to into line for a formalities check. With the formalities check, we check all the sort of basics — that we've got enough information to contact you, we've got your name, we've got correct representations for the designs. Ideally, nice drawings like those other ones on those photographs. And the date that all that's in order, that we receive your application, will be your filing date.
Once we've received it it'll go into queue, as I mentioned, and we'll check all the formalities and you'll receive some information from us saying that we've received it, what your priority date, what you're filing your priority date is, and then you'll receive something else once we look at their formalities. In many cases this will just be adding a notification, design is now registered, because there hasn't been any problems. But it is quite common to get a, what we call a first report or an adverse report, if there are some issues with your application. So we'll send you that and you will have outlined the whatever issues there are and give you your options for how you might overcome them.
Once your design passes the formalities check, it will be registered and published. It'll be published in our journal and on the online database and this will happen within a matter of weeks from when you apply. At the moment we're running quite quickly, I think we're in a handful of weeks or less. Our time frames, they change depending on how much work we get in, but we're usually pretty quick with that.
Once it's registered, your rights can be tested through examination and we'll talk a little bit about that shortly. So your applications have to be carefully prepared because once it's registered it's very difficult to make changes.
So there are two steps to designs protection. The first one is registration. The second is certification. As Sarah mentioned earlier, registration or certification protects your design for five years from the date your application was filed and that can be extended once out to a maximum of 10 years.
Once your design registration is ceased, it's no longer protected and it can be used by anyone. So when you apply you'll be given a couple of choices. You can choose to either just register it or you can choose to also certify it as well as register it. If you don't choose, there might be a third option as we've changed the system recently. If you don't choose to register, it will automatically go through, be taken as if you have chosen to register it after six months. So that's a recent change. We've had a few changes to the designs legislative, legislation this month um so we're working through those.
There are a few minor changes um we will be talking, we will have another webinar tomorrow which we'll talk about uh those changes in much more depth. But for the purposes of this one, there aren't too many issues if you haven't been filing, too many differences, and if you haven't been filing before you can safely ignore that and just learn the new ones.
So back to registration. So a registered design gives you protection for the overall visual appearance of your product. It gives you the exclusive rights to commercially use, license, and/or sell the design, and it gives you the option at any time to request examination for the purpose of certification. So certification is the final step once your design's been registered. It can then go, it can then be examined which may lead to certification.
During examination we test, essentially test the validity of your right, by doing some searching, and we're looking to see if there is anything out there that is too similar to your design already published, essentially.
So the benefits of certifying your design are that if someone else uses it, it gives you the legal right to enforce it. If it's just a registration you don't have the legal right to enforce your design. If you want to enforce your design you'll need to get it certified.
Many people choose just to register and if they then find that someone else is infringing they will then request certification, but lots of other people also want to know that their right’s going to be something that they can protect and request certification up front. It's really up to you and what the best case for your business is. So to be certified it must be your design will be examined and it must be found to be new and distinctive and Sarah’s going to talk a bit about that.
Sarah:
Thanks. So as I mentioned before there are legal requirements, design right um. Essentially new and distinctive is required for it to be certified, and what that means is when we undergo the examination process, so once you've got your design right registered you can then choose for it to be examined to get it certified. So during that examination process, as an examiner we essentially search everything we can find across the internet to try and find something that looks substantially similar um or identical to your product. So if it's out there on the internet, we're probably going to find it and if it was out there before you filed for your design right, then that means it's likely to become a barrier to actually getting a certified right.
Before you apply it's probably a really good idea to do some research on what has already been made public, because you don't get a refund on the fees that you pay. So it's really important to know the market. It's also important to keep your design a secret so don't make it public until you apply. We know it's hard not to tell others you know, if you've got something you're really passionate about you want to get it out there, but even on social media can actually make it really difficult for you to get
Protection. We do recommend if you want to show your design to others, you can use something like a non-disclosure agreement to sort of formalise this.
We do, as Derek recently mentioned, have some changes that have come in that might help with this.
Derek:
Yeah so as I mentioned we've had some legislative changes very recently. So they only came into effect on the 10th of March this year. And the big ticket item from that is the grace period. So anything filed on or after the 10th of March this year might be eligible for a grace period. So Sarah said you have to keep your design secret and that's always a good idea, but if you have the published design after the 10th of March and you apply after the 10th of March you might, it might not be as big an issue as it used to be. So previously if you published your design before you applied, that would probably mean you weren't able to certify it, so you wouldn't be able to enforce your design. Under the new rules, if you have filed after the 10th of March and if you've accidentally or deliberately published after the 10th of March this year, uh you might be able to, that might no longer be an issue under the grace period.
As I mentioned we're talking, we have another webinar tomorrow which will go into much, much more depth on the changes and about half of that will be about the grace period.
Sarah:
Thanks Derek. I just want to touch quickly on the benefits of a design right and why you might want to consider registering. So essentially a registered design right gives you as the owner the exclusive rights to commercially, you know license, use or sell that design. And it can be a valuable commercial asset if you're, you know how to work it and what it does. If you get to the certification stage you do have a legal right to stop others from using the design and you know, you can take action against other people using that. And we'll touch on that a bit later in the presentation.
But there are some questions that you might want to consider when deciding whether or not you need a design right. Essentially some of the benefits are you know, you can protect from copycats, so if that's something you're worried about somebody out in the marketplace copying you, having a certified design right is a legal enforcement instrument that you can use. And it can be a really good valuable business asset and it also you know, can support further R and D by others, um and you know open up new opportunities and new revenue streams for you.
So it can be a valuable asset. Of course there's always reasons not to register um and a lot of those come down to cost. You know as I said, it is it does cost a little bit of money to get both a registered and then a certified right and you may have protection from other unregistered rights particularly in copyright which again we'll touch on briefly, but it's really important I think to understand what your business is and what kind of protection you need before applying for a design right. It sort of leads me into the next slide which is just sort of some tips about you know, what to do before you apply.
So now that you know what a design is and you've decided you do want to protect your product, how do you go about getting one? Derek stepped through IP Australia's process earlier but I really want to highlight that it's really important to have sort of your own pre-application pre-launchment plan. In certain circumstances it may be worth holding off releasing your work or securing a design right and then releasing all variations of your work at the same time. So it's really dependent on what your strategy is for your business and how you might you know, factor a design right into that wider strategy.
I think it's important to just touch on some of the areas that you know, as a designs examiner, we've found that applicants are getting a little bit confused on. So the first one is ownership. So if you want to apply for a design right, the owner of that right has to have legal personality, which means it has to be an individual or a registered company or a body corporate and it can't be just a business name or a trust. So it needs to actually be a company not just a business name. Applications can have more than one owner but they all must have legal personality.
The second thing we notice is product name. So a lot of people have a little bit of trouble getting their product name right and it's really important that you just provide enough information so that we know what your product is and you know, make sure that it matches what you've sent us. But we don't need specific trademarks or anything like that in your product name. It should be a generic name for what your product is.
So going back to the Dyson example you know, that was part of a vacuum cleaner. If they'd submitted that as hair dryer, that's not an accurate representation of what it is and they didn't submit it as Dyson vacuum cleaner. They've just submitted it as part of a vacuum cleaner because that's the generic name for what that is.
The other thing that comes up quite a lot is the representations, which is essentially the images that you submit with your application. These form the basis of your protection so they really need to be you know, clear, consistent um and really show off the details. So if you remember back to that Dyson and Bodum examples they had lots of different perspective views from the different angles that all show the one product, and again it's also important to make sure that each application has the one product in it so that you're not getting any kind of objections for further products. So each design registration is for one single product.
Just on application tips on the search side. I think it's really important to just do your homework and you can do this yourself, but you can also you know, engage an IP professional if you think you need the help. And even if you do engage in an IP professional, it's really worth having a look for yourself because you may be able to save yourself some time and money.
We do have quite a lot of information on our website and you know, as designs examiners we're also really accessible so you can call IP Australia and you know, get some information that might give you, you know a place to start. I think if you're applying for a design it's really good to know what is going on in your marketplace so look around for similar items, find out what other people are doing to see if you're going to have any kind of issues.
As Derek mentioned before, IP Australia does have a register of all registered and certified designs, so you can use that as a starting point to really see if there are anything similar out there in the market already. Because if it's out there already and you're planning on getting yours certified, it's likely to become a blocker if it is too similar. Other things, I think, use the internet — Google, Facebook, Instagram — all of those types of websites where people post their products, they're the type of things that the examiners are going to be looking at when we're trying to find something similar. So it's all kind of research you can do yourself before you apply so that you can be more confident that you can get a registered or certified design.
The second point, if we go back, is develop your strategy. So consider if you're going to have variations of your design, if you're just going have the one design. And if you're going to have variations, do you want to file them all at once? If you don't, are you going to file one? And then the next one is going to be considered too similar things, like that can be an issue. Again IP professionals specialising, who specialise in designs, may be able to help with that. But you know check out, well because there is a lot of information on there about you know, sort of how you may choose to file designs like that.
And the third thing is you know, submit your application. So you do this by using our online services platform. You know, make sure you're aware of what the appropriate fees are and that you are ready to pay them and make sure, like I said, before that you provide really clear representations or images of your product and that your application is really ready to go, so that once it gets to that formalities check that Derek mentioned um then it's likely you know it can be clear it can pass through that rather quickly, rather than any issues coming up.
But again if issues do come up, we give you time to address them and you know you'll be able to chat to your designs examiner to really assist with that.
I’ll hand back over to Derek to talk about what happens if somebody does copy your design.
Derek:
Now we're getting into the scary stuff. If someone copies your design, probably the number one piece of advice I would give is that you talk to an IP professional, someone who knows what they're doing with intellectual property law.
Enforcement and infringement of your designs can be very complex. It can also be very costly if you don't get it right, so an IP professional such as an attorney who also specialises in IP, would be a great place to start. IP Australia is not in a position to give any advice on infringement. We simply regulate the registration and the design system. We don't have any enforcement powers. But an IP professional, they can give you advice and they can help you decide on the best course of action if someone's copied your design.
A couple of things we can say though, is remember as I mentioned before, if your design is registered but not verified, it's not something you can enforce in the courts. You can refer you can request certification again that someone may be infringing. With the fans on the screen here, this is a very, very quick case study. So the fan on the left is one of the representations of a design which was registered and certified in 2012. The owner discovered that someone was importing and selling the fans on the right. They took the matter to court and the judge decided that although the fans on the right have a number of obvious differences in shape and configuration, they also have significant and eye-catching similarities that create an overall impression of substantial similarity.
So the owner of the registered design on the left was able to seek financial relief based on the infringing fans. Well that's a very simplified uh version of that case, but it indicates that something doesn't have to be identical for someone to be infringing and that plays both ways. So if you are out there with a product um and similar to someone else's, they may and they've got a registered design, they may come after you for infringement. Again first protocol I would suggest would be an IP professional, someone who's got experience in dealing with infringement, because it can get very expensive and very complicated very quickly if you don't get it right.
The next thing we're going to talk about is designs and copyright. So designs and copyright can interact in interesting ways. Remembering that this is a designs 101. We're not going to go into, right into the weeds on this. We're just going to talk about it a little bit. So the types of material protected by copyright usually include artistic works and there are three sort of main areas of, three main categories, that can be considered artistic works. These are generally things like paintings, sculptures, drawings, photographs, might be buildings, models of buildings. Might be works of artistic craftsmanship. If the product bearing the design has been produced with, and this is again, this is simplified. If you want more information on designs and copyright talking to another it would be a great idea. Let's take a look at the copyright council website. They have some excellent information on copyright including um some of the overlapping stuff with designs.
So if you have a product and it's being produced with the intention to sell, it's generally, it's unlikely that copyright protection can be relied on unless it's a 2D design or a work of artistic craftsmanship, something created to order, including where there have been less than 50 made. So in the Copyright Act it mentions the number 50. If you make more than 50 of something, it's something that should probably have been protected with a design rather than relying on copyright. When you register your design copy, you usually lose your copyright protection. So designs and copyright and the other IP rights all work together. But they tend not to overlap very much.
There is a little bit of an overlap here as we've talked about and that can be for some artistic works and for some 2D designs. But they're all intended to work together. So if you've lost copyright protection and haven't applied for a design right, as long as you've done it after the 10th of March might be something you can still get. If you have done it before the 10th of March, it might be very difficult to protect your design. So having a think about your strategy that Sarah talked about earlier in terms of copyright is certainly valuable. It's not always the case that you can rely on copyright. Sometimes it is, sometimes it's not. Again talking to an IP professional before you let your design out of the bag can be a good idea.
And speaking about protecting things in concert with the other IP rights, often uh you, registering a trademark is really useful. So one of the things we get here quite a lot is that people are having their desire in terms of other companies making replicas. So if you, as the designer worried about that or think that might happen, registering your name as a trademark can be useful. So for example if David Tribridge has his name registered as a trademark it can be very difficult for people to then describe their design as a David Tribridge replica lamp. What they might have to just describe it as a replica lamp which is a lot less useful for people searching on Google, it's a lot they're internet searching and advertising is not nearly as effective, if you can tie up your IP rights.
And back to Sarah. We're going to talk a bit about international protection.
Sarah:
Thanks. I just want to quickly mention this before we finish the main part of our presentation and move on to questions, but I think it's really important to note that if you get an Australian design right it is only for Australia. So if you're seeking to sort of expand your business out into other countries you will need to look into what IP protection in other countries looks like.
It's also, so some things to consider are you know the laws are obviously very different in different countries. In particular, most countries don't have the two-step system like Australia does, and you may need to have documents translated into other languages if you are applying in countries where that is the main language. Generally I think a lot of countries, you may require the use of an IP professional from that country to assist you with filing, and also the fees are something to really consider.
I did notice a question just in the chat about the difference between a priority date and a filing date and that's sort of applicable to this sort of international protection. So Australia is a party to the Paris Convention for the protection of industrial property. So under the terms of this convention this means that if you make, if you file for an application in one of these countries that is you know a party to this convention, then you do have six months from the date of that filing to then apply for Australia.
So if you file in Australia the date you file, that's your filing date. If you file overseas and then, in a convention country, and then you apply in Australia in between that six months, you get that original date that you filed overseas in, and we call that the priority date. So essentially it's the date of filing but because of this convention that we're a part of it, can mean you get a little bit extra time before you have to file in Australia. And also vice versa. If you file in Australia you do have that six months to claim your priority date in another country.
Again, it's probably something worth speaking to an IP professional about particularly because not all countries are part of this convention. But you can find the list on the World Intellectual Property Organization's website.
So I think that sort of wraps up the bulk of our presentation so I might just hand back over to Veronica while we prepare to answer some questions.
Veronica:
Hello. Thank you all so much for joining. Please feel free to pop any questions in the chat. I just wanted to mention there's been quite a bit of discussion about the grace period and our new legislation changes. We are doing a webinar tomorrow that will cover most of these changes and there'll be an opportunity for Q and A at the end of that as well.
I have a question for Sarah if she's still there. In the chat it said, “What about a study, so a concept design but not an actual product in use?”
Sarah:
Yeah so that doesn't need to be something you can give a design representational because we do require a design to be a physical so it has to be represented visually. So for something like a study it's going to be really hard for that to be a product. It's more of a concept that can be protected with other IP rights. But it's very unlikely, unless it's a physical product, that you can actually, you know, take a picture of or draw out and show things. That's something that you really need to be able to get design right protection. It's not really for concepts or ideas like that.
Veronica:
Yep and we have another question in the chat. "I noticed some designs are not available for public inspection. Is it possible for lawyers to access these records to better advise their clients?"
Derek:
So if something's on our website that's not available for public inspection, it's usually because it hasn't been registered and published yet. Until we publish it, it's not made public. There are some old records that our system hasn't managed to bring over. These tend to be from 20 years ago and more, and unfortunately we don't have access to those, I believe. But the easy, the thing to do might be to look in the old journals for them. But we don't have any way to publish those. It seems to be an IT issue with that and I sympathise. It's very frustrating.
Veronica:
Thanks. "If the design is in different sizes, do we have to apply design rights for every size?"
Derek:
Generally not. So we don't have any measurements, we don't want to see any measurements or scale on your design application. So, as long as it scales up proportionally you've got protection for all sizes. So, if you, if you apply for something say a ball that will cover you for something the size of a squash ball, a tennis ball, a basketball ball. As long as it looks the same you'll be covered.
Veronica:
So another question we have is, "Once the 10 years has elapsed, does the design have to be completely re-registered?"
Derek:
It would be difficult to apply for it again and to make something enforceable. So because your design had already been registered once, you won't be able to make it to apply and get an enforceable right. Because if you, if it goes to examination, it won't be able to be certified because we will find the earlier design application of the earlier registered design, and that will knock it out. If your design has been published previously, you won't be able to get protection for it.
Veronica:
And we have a question about design uh, sorry, IP rights for mobile applications. "What are their options there?"
Derek:
First option would be to talk to an IP professional. They'll be able to guide you down the right path. Some of your options might include a patent, might include trademarks. There might be something you can do with designs. Generally these are difficult um graphic, what we call graphic user interfaces, are an untested or somewhat untested area of law with designs. I'm not going to get into those here.
Veronica:
Okay if you don't have any other questions, I might just navigate, do you mind skipping forward to the last slide of the presentation to our contact details? So if you think of any other questions later today or whatever, feel free to email us at outreach@ipaustralia.gov.au.
Thank you so much for everyone who joined today and thank you so much to our presenters Derek and Sarah, and have a lovely day everyone. Thank you.
Veronica:
Welcome to part one of our design webinar series designs 101. My name is Veronica and I'm part of the communications team at Intellectual Property Australia. We'll get started shortly but in the meantime just a reminder to everyone that this session is recorded. Can we please ask that you keep your cameras off and stay on mute during the presentation. We will answer any questions at the end. But please feel free to pop your questions in the chat in the meantime.
Firstly I’d like to introduce our two speakers. We have Derek White. Derek joined IP Australia in 2007 and has spent 10 years as a trademark examiner. During that time he was involved in most aspects of trademarks, particularly international trademarks, and training, new trademark examinations and for the past five years has been a design examiner with his focus again on training new examiners and also updating the new designs legislation.
We also have Sarah Patton who has worked with IP Australia since 2017. She is currently a designs examiner and has also worked in trademark examination and the public education and awareness and strategies. She has a particular interest in Indigenous Knowledge intellectual property issues and educating customers about IP education. So just a reminder this session is recorded and we ask that you pop any questions you have throughout the presentation into the chat. And I will hand over to Sarah now.
Sarah:
Thank you Veronica and hi everyone. I'd like to start off just by acknowledging that Derek and I are coming to you today from our office at IP Australia which is on Ngunnawal Country and I’d just like to pay my respects to elders past and present and also to the lands in which you're dialing in from and pay my respects to the elders of those, the traditional custodians of those lands as well. I think we're just going to get straight into it. What is intellectual property?
So for those of you that are not quite sure, IP is essentially describing the application of the mind to develop something that is new or original. So this can be many different things including new inventions, brand new design or an artistic creation. At IP Australia specifically we deal with the four registered rights so those are trademarks, designs, patents and plant breeder's rights. So we offer, we deal with the examination and registration of those rights but we also do things like these webinars. We deal in, you know, educating people about IP and how it works in Australia. And we also provide advice on policy to government and also, you know, trade agreements and international, stuff like that. But today we're just going to be talking about design rights and what exactly a design right is and whether or not it's the right kind of right for you.
So um we'll talk a little bit about copyright towards the end because there is you know um an interesting sort of interaction between the two rights, um but we'll briefly touch on that um. We will focus on what we mean by a design right and how it might help you. So essentially a design right um, so the word design I think has a lot of meanings for a lot of different people and a lot of broad meanings and I think it can confuse a few people.
When we talk about a design in the context of an IP right, what we're talking about is something that protects new and distinctive products. So that's things like as you can see on the screen uh shape, colour, configuration, pattern. These are visual features of something so we'll talk a little bit more later about what a design isn't, but, you're getting protection for what the product looks like. We don't care what it does, we don't care how it works, it's what it looks like. If that is new and distinctive and that's something you expect that's what a design right will help you with.
So these are just some examples of registered design rights. So you'll see, you know, you can get a design right for quite a lot of things — from things that you wear, things that you drive, things that you eat. It's really sort of a broad kind of protection but it is for that visual appearance of those things. So design rights um again are very specific right and like I mentioned briefly there's a lot of things they don't protect. So we don't care about how your product works. That's more going to be covered what it's made of, um or the brand name or the logo. All of these things simply going to be covered by other IP rights and it may be something you want to consider as part of your wider IP strategy — how a design right may fit into that.
Another important point I think is that design rights don't exist automatically. So you may be aware that in Australia copyright is an automatic right. A design right is something that you need to apply for to gain protection and you need to meet the legal requirements to do so. Um it's also good to note that there are fees involved in applying for a design right so that's something you should consider. And protection lasts for a maximum of 10 years so if you do have protection, it can give you the exclusive right to determine how your design is used and by who.
I’ll just hand over to Derek to go into a little bit more detail with some examples.
Derek:
Hi everyone. So some of you may be familiar with the product on the screen. It's one of Dyson’s handheld vacuum cleaners or it's a part of one of the Dyson's vacuum cleaners. It was filed and registered in 2013, certified in 2014. I’ll talk a little bit more about those terms shortly, and it's a good example of how designs are concerned solely with the visual features of a product. Design is a design applied to a product. Without the product there's no design. Um creates all kinds of different innovative technological features such as Dyson’s famous cyclonic action however, this application doesn't show any of that. This application just shows the drawings of what the product looks like.
It's very simple labelling, it's just sort of different views. It's top, bottom, left, right, things like that. And that's the kind of thing we want to see in a designs application. If you add additional information, that can be an issue and we might have to write out to you and ask you to remove it. So we quite often get people adding, you know, arrows pointing out various different parts of the product, but that's not something that designs are concerned with. So we often have to write out and ask people to remove that or any other data that might be in the application.
So this one's really nice. It's very simple. It's a reasonably complicated drawing, but it's nice, simple representation showing everything in the product and very simple labelling.
So the next one we've got, whilst the designer might have created this logo, they most certainly did, on its own it's not capable of being registered as a design right. This is because it's not applied to a product. So as I mentioned just before, a design is a design in relation to a product.
For this one, if the intention is to protect the brand name 'bodum' that might be something that a trade mark can cover. In this case you can see the registered symbol, which indicates it is a registered trade mark. But for this example, without a product, this is not enough for a design.
But when we put it on to an actual product, in this case a BBQ grill, it becomes something that can be registered as a design. So I'm just trying to show some things that are very common mistakes that people come up with. We get quite a lot of people just applying for logos and wanting it to be their design. Designs have to be a product so this grill could have been registered with or without the 'bodum' name on it. But the 'bodum' name can't be registered without some kind of product.
Again, this is another nice example of how to apply for your design. It's just showing the drawings, just showing the different views — front, back, top, bottom perspective view, and without any extraneous matter. It's only showing what the design is and nothing else.
You don't have to use drawings when you're applying. You can use photographs. But they need to be clear, they need to be showing just the product with a contrasting background. We don't want to see your desk covered in all sorts of other things. We don't want to see the rest of your warehouse or your shop. We just want to see the product as clearly as possible, with as little else in the photograph as possible.
We'll move onto what happens after you file your application. So shortly after you've filed your application, we'll track that as met minimal filing requirements and determine what fees are payable. If you haven't paid the fees, we'll ask you to pay them. If you have paid them, it will move on to into line for a formalities check. With the formalities check, we check all the sort of basics — that we've got enough information to contact you, we've got your name, we've got correct representations for the designs. Ideally, nice drawings like those other ones on those photographs. And the date that all that's in order, that we receive your application, will be your filing date.
Once we've received it it'll go into queue, as I mentioned, and we'll check all the formalities and you'll receive some information from us saying that we've received it, what your priority date, what you're filing your priority date is, and then you'll receive something else once we look at their formalities. In many cases this will just be adding a notification, design is now registered, because there hasn't been any problems. But it is quite common to get a, what we call a first report or an adverse report, if there are some issues with your application. So we'll send you that and you will have outlined the whatever issues there are and give you your options for how you might overcome them.
Once your design passes the formalities check, it will be registered and published. It'll be published in our journal and on the online database and this will happen within a matter of weeks from when you apply. At the moment we're running quite quickly, I think we're in a handful of weeks or less. Our time frames, they change depending on how much work we get in, but we're usually pretty quick with that.
Once it's registered, your rights can be tested through examination and we'll talk a little bit about that shortly. So your applications have to be carefully prepared because once it's registered it's very difficult to make changes.
So there are two steps to designs protection. The first one is registration. The second is certification. As Sarah mentioned earlier, registration or certification protects your design for five years from the date your application was filed and that can be extended once out to a maximum of 10 years.
Once your design registration is ceased, it's no longer protected and it can be used by anyone. So when you apply you'll be given a couple of choices. You can choose to either just register it or you can choose to also certify it as well as register it. If you don't choose, there might be a third option as we've changed the system recently. If you don't choose to register, it will automatically go through, be taken as if you have chosen to register it after six months. So that's a recent change. We've had a few changes to the designs legislative, legislation this month um so we're working through those.
There are a few minor changes um we will be talking, we will have another webinar tomorrow which we'll talk about uh those changes in much more depth. But for the purposes of this one, there aren't too many issues if you haven't been filing, too many differences, and if you haven't been filing before you can safely ignore that and just learn the new ones.
So back to registration. So a registered design gives you protection for the overall visual appearance of your product. It gives you the exclusive rights to commercially use, license, and/or sell the design, and it gives you the option at any time to request examination for the purpose of certification. So certification is the final step once your design's been registered. It can then go, it can then be examined which may lead to certification.
During examination we test, essentially test the validity of your right, by doing some searching, and we're looking to see if there is anything out there that is too similar to your design already published, essentially.
So the benefits of certifying your design are that if someone else uses it, it gives you the legal right to enforce it. If it's just a registration you don't have the legal right to enforce your design. If you want to enforce your design you'll need to get it certified.
Many people choose just to register and if they then find that someone else is infringing they will then request certification, but lots of other people also want to know that their right’s going to be something that they can protect and request certification up front. It's really up to you and what the best case for your business is. So to be certified it must be your design will be examined and it must be found to be new and distinctive and Sarah’s going to talk a bit about that.
Sarah:
Thanks. So as I mentioned before there are legal requirements, design right um. Essentially new and distinctive is required for it to be certified, and what that means is when we undergo the examination process, so once you've got your design right registered you can then choose for it to be examined to get it certified. So during that examination process, as an examiner we essentially search everything we can find across the internet to try and find something that looks substantially similar um or identical to your product. So if it's out there on the internet, we're probably going to find it and if it was out there before you filed for your design right, then that means it's likely to become a barrier to actually getting a certified right.
Before you apply it's probably a really good idea to do some research on what has already been made public, because you don't get a refund on the fees that you pay. So it's really important to know the market. It's also important to keep your design a secret so don't make it public until you apply. We know it's hard not to tell others you know, if you've got something you're really passionate about you want to get it out there, but even on social media can actually make it really difficult for you to get
Protection. We do recommend if you want to show your design to others, you can use something like a non-disclosure agreement to sort of formalise this.
We do, as Derek recently mentioned, have some changes that have come in that might help with this.
Derek:
Yeah so as I mentioned we've had some legislative changes very recently. So they only came into effect on the 10th of March this year. And the big ticket item from that is the grace period. So anything filed on or after the 10th of March this year might be eligible for a grace period. So Sarah said you have to keep your design secret and that's always a good idea, but if you have the published design after the 10th of March and you apply after the 10th of March you might, it might not be as big an issue as it used to be. So previously if you published your design before you applied, that would probably mean you weren't able to certify it, so you wouldn't be able to enforce your design. Under the new rules, if you have filed after the 10th of March and if you've accidentally or deliberately published after the 10th of March this year, uh you might be able to, that might no longer be an issue under the grace period.
As I mentioned we're talking, we have another webinar tomorrow which will go into much, much more depth on the changes and about half of that will be about the grace period.
Sarah:
Thanks Derek. I just want to touch quickly on the benefits of a design right and why you might want to consider registering. So essentially a registered design right gives you as the owner the exclusive rights to commercially, you know license, use or sell that design. And it can be a valuable commercial asset if you're, you know how to work it and what it does. If you get to the certification stage you do have a legal right to stop others from using the design and you know, you can take action against other people using that. And we'll touch on that a bit later in the presentation.
But there are some questions that you might want to consider when deciding whether or not you need a design right. Essentially some of the benefits are you know, you can protect from copycats, so if that's something you're worried about somebody out in the marketplace copying you, having a certified design right is a legal enforcement instrument that you can use. And it can be a really good valuable business asset and it also you know, can support further R and D by others, um and you know open up new opportunities and new revenue streams for you.
So it can be a valuable asset. Of course there's always reasons not to register um and a lot of those come down to cost. You know as I said, it is it does cost a little bit of money to get both a registered and then a certified right and you may have protection from other unregistered rights particularly in copyright which again we'll touch on briefly, but it's really important I think to understand what your business is and what kind of protection you need before applying for a design right. It sort of leads me into the next slide which is just sort of some tips about you know, what to do before you apply.
So now that you know what a design is and you've decided you do want to protect your product, how do you go about getting one? Derek stepped through IP Australia's process earlier but I really want to highlight that it's really important to have sort of your own pre-application pre-launchment plan. In certain circumstances it may be worth holding off releasing your work or securing a design right and then releasing all variations of your work at the same time. So it's really dependent on what your strategy is for your business and how you might you know, factor a design right into that wider strategy.
I think it's important to just touch on some of the areas that you know, as a designs examiner, we've found that applicants are getting a little bit confused on. So the first one is ownership. So if you want to apply for a design right, the owner of that right has to have legal personality, which means it has to be an individual or a registered company or a body corporate and it can't be just a business name or a trust. So it needs to actually be a company not just a business name. Applications can have more than one owner but they all must have legal personality.
The second thing we notice is product name. So a lot of people have a little bit of trouble getting their product name right and it's really important that you just provide enough information so that we know what your product is and you know, make sure that it matches what you've sent us. But we don't need specific trademarks or anything like that in your product name. It should be a generic name for what your product is.
So going back to the Dyson example you know, that was part of a vacuum cleaner. If they'd submitted that as hair dryer, that's not an accurate representation of what it is and they didn't submit it as Dyson vacuum cleaner. They've just submitted it as part of a vacuum cleaner because that's the generic name for what that is.
The other thing that comes up quite a lot is the representations, which is essentially the images that you submit with your application. These form the basis of your protection so they really need to be you know, clear, consistent um and really show off the details. So if you remember back to that Dyson and Bodum examples they had lots of different perspective views from the different angles that all show the one product, and again it's also important to make sure that each application has the one product in it so that you're not getting any kind of objections for further products. So each design registration is for one single product.
Just on application tips on the search side. I think it's really important to just do your homework and you can do this yourself, but you can also you know, engage an IP professional if you think you need the help. And even if you do engage in an IP professional, it's really worth having a look for yourself because you may be able to save yourself some time and money.
We do have quite a lot of information on our website and you know, as designs examiners we're also really accessible so you can call IP Australia and you know, get some information that might give you, you know a place to start. I think if you're applying for a design it's really good to know what is going on in your marketplace so look around for similar items, find out what other people are doing to see if you're going to have any kind of issues.
As Derek mentioned before, IP Australia does have a register of all registered and certified designs, so you can use that as a starting point to really see if there are anything similar out there in the market already. Because if it's out there already and you're planning on getting yours certified, it's likely to become a blocker if it is too similar. Other things, I think, use the internet — Google, Facebook, Instagram — all of those types of websites where people post their products, they're the type of things that the examiners are going to be looking at when we're trying to find something similar. So it's all kind of research you can do yourself before you apply so that you can be more confident that you can get a registered or certified design.
The second point, if we go back, is develop your strategy. So consider if you're going to have variations of your design, if you're just going have the one design. And if you're going to have variations, do you want to file them all at once? If you don't, are you going to file one? And then the next one is going to be considered too similar things, like that can be an issue. Again IP professionals specialising, who specialise in designs, may be able to help with that. But you know check out, well because there is a lot of information on there about you know, sort of how you may choose to file designs like that.
And the third thing is you know, submit your application. So you do this by using our online services platform. You know, make sure you're aware of what the appropriate fees are and that you are ready to pay them and make sure, like I said, before that you provide really clear representations or images of your product and that your application is really ready to go, so that once it gets to that formalities check that Derek mentioned um then it's likely you know it can be clear it can pass through that rather quickly, rather than any issues coming up.
But again if issues do come up, we give you time to address them and you know you'll be able to chat to your designs examiner to really assist with that.
I’ll hand back over to Derek to talk about what happens if somebody does copy your design.
Derek:
Now we're getting into the scary stuff. If someone copies your design, probably the number one piece of advice I would give is that you talk to an IP professional, someone who knows what they're doing with intellectual property law.
Enforcement and infringement of your designs can be very complex. It can also be very costly if you don't get it right, so an IP professional such as an attorney who also specialises in IP, would be a great place to start. IP Australia is not in a position to give any advice on infringement. We simply regulate the registration and the design system. We don't have any enforcement powers. But an IP professional, they can give you advice and they can help you decide on the best course of action if someone's copied your design.
A couple of things we can say though, is remember as I mentioned before, if your design is registered but not verified, it's not something you can enforce in the courts. You can refer you can request certification again that someone may be infringing. With the fans on the screen here, this is a very, very quick case study. So the fan on the left is one of the representations of a design which was registered and certified in 2012. The owner discovered that someone was importing and selling the fans on the right. They took the matter to court and the judge decided that although the fans on the right have a number of obvious differences in shape and configuration, they also have significant and eye-catching similarities that create an overall impression of substantial similarity.
So the owner of the registered design on the left was able to seek financial relief based on the infringing fans. Well that's a very simplified uh version of that case, but it indicates that something doesn't have to be identical for someone to be infringing and that plays both ways. So if you are out there with a product um and similar to someone else's, they may and they've got a registered design, they may come after you for infringement. Again first protocol I would suggest would be an IP professional, someone who's got experience in dealing with infringement, because it can get very expensive and very complicated very quickly if you don't get it right.
The next thing we're going to talk about is designs and copyright. So designs and copyright can interact in interesting ways. Remembering that this is a designs 101. We're not going to go into, right into the weeds on this. We're just going to talk about it a little bit. So the types of material protected by copyright usually include artistic works and there are three sort of main areas of, three main categories, that can be considered artistic works. These are generally things like paintings, sculptures, drawings, photographs, might be buildings, models of buildings. Might be works of artistic craftsmanship. If the product bearing the design has been produced with, and this is again, this is simplified. If you want more information on designs and copyright talking to another it would be a great idea. Let's take a look at the copyright council website. They have some excellent information on copyright including um some of the overlapping stuff with designs.
So if you have a product and it's being produced with the intention to sell, it's generally, it's unlikely that copyright protection can be relied on unless it's a 2D design or a work of artistic craftsmanship, something created to order, including where there have been less than 50 made. So in the Copyright Act it mentions the number 50. If you make more than 50 of something, it's something that should probably have been protected with a design rather than relying on copyright. When you register your design copy, you usually lose your copyright protection. So designs and copyright and the other IP rights all work together. But they tend not to overlap very much.
There is a little bit of an overlap here as we've talked about and that can be for some artistic works and for some 2D designs. But they're all intended to work together. So if you've lost copyright protection and haven't applied for a design right, as long as you've done it after the 10th of March might be something you can still get. If you have done it before the 10th of March, it might be very difficult to protect your design. So having a think about your strategy that Sarah talked about earlier in terms of copyright is certainly valuable. It's not always the case that you can rely on copyright. Sometimes it is, sometimes it's not. Again talking to an IP professional before you let your design out of the bag can be a good idea.
And speaking about protecting things in concert with the other IP rights, often uh you, registering a trademark is really useful. So one of the things we get here quite a lot is that people are having their desire in terms of other companies making replicas. So if you, as the designer worried about that or think that might happen, registering your name as a trademark can be useful. So for example if David Tribridge has his name registered as a trademark it can be very difficult for people to then describe their design as a David Tribridge replica lamp. What they might have to just describe it as a replica lamp which is a lot less useful for people searching on Google, it's a lot they're internet searching and advertising is not nearly as effective, if you can tie up your IP rights.
And back to Sarah. We're going to talk a bit about international protection.
Sarah:
Thanks. I just want to quickly mention this before we finish the main part of our presentation and move on to questions, but I think it's really important to note that if you get an Australian design right it is only for Australia. So if you're seeking to sort of expand your business out into other countries you will need to look into what IP protection in other countries looks like.
It's also, so some things to consider are you know the laws are obviously very different in different countries. In particular, most countries don't have the two-step system like Australia does, and you may need to have documents translated into other languages if you are applying in countries where that is the main language. Generally I think a lot of countries, you may require the use of an IP professional from that country to assist you with filing, and also the fees are something to really consider.
I did notice a question just in the chat about the difference between a priority date and a filing date and that's sort of applicable to this sort of international protection. So Australia is a party to the Paris Convention for the protection of industrial property. So under the terms of this convention this means that if you make, if you file for an application in one of these countries that is you know a party to this convention, then you do have six months from the date of that filing to then apply for Australia.
So if you file in Australia the date you file, that's your filing date. If you file overseas and then, in a convention country, and then you apply in Australia in between that six months, you get that original date that you filed overseas in, and we call that the priority date. So essentially it's the date of filing but because of this convention that we're a part of it, can mean you get a little bit extra time before you have to file in Australia. And also vice versa. If you file in Australia you do have that six months to claim your priority date in another country.
Again, it's probably something worth speaking to an IP professional about particularly because not all countries are part of this convention. But you can find the list on the World Intellectual Property Organization's website.
So I think that sort of wraps up the bulk of our presentation so I might just hand back over to Veronica while we prepare to answer some questions.
Veronica:
Hello. Thank you all so much for joining. Please feel free to pop any questions in the chat. I just wanted to mention there's been quite a bit of discussion about the grace period and our new legislation changes. We are doing a webinar tomorrow that will cover most of these changes and there'll be an opportunity for Q and A at the end of that as well.
I have a question for Sarah if she's still there. In the chat it said, “What about a study, so a concept design but not an actual product in use?”
Sarah:
Yeah so that doesn't need to be something you can give a design representational because we do require a design to be a physical so it has to be represented visually. So for something like a study it's going to be really hard for that to be a product. It's more of a concept that can be protected with other IP rights. But it's very unlikely, unless it's a physical product, that you can actually, you know, take a picture of or draw out and show things. That's something that you really need to be able to get design right protection. It's not really for concepts or ideas like that.
Veronica:
Yep and we have another question in the chat. "I noticed some designs are not available for public inspection. Is it possible for lawyers to access these records to better advise their clients?"
Derek:
So if something's on our website that's not available for public inspection, it's usually because it hasn't been registered and published yet. Until we publish it, it's not made public. There are some old records that our system hasn't managed to bring over. These tend to be from 20 years ago and more, and unfortunately we don't have access to those, I believe. But the easy, the thing to do might be to look in the old journals for them. But we don't have any way to publish those. It seems to be an IT issue with that and I sympathise. It's very frustrating.
Veronica:
Thanks. "If the design is in different sizes, do we have to apply design rights for every size?"
Derek:
Generally not. So we don't have any measurements, we don't want to see any measurements or scale on your design application. So, as long as it scales up proportionally you've got protection for all sizes. So, if you, if you apply for something say a ball that will cover you for something the size of a squash ball, a tennis ball, a basketball ball. As long as it looks the same you'll be covered.
Veronica:
So another question we have is, "Once the 10 years has elapsed, does the design have to be completely re-registered?"
Derek:
It would be difficult to apply for it again and to make something enforceable. So because your design had already been registered once, you won't be able to make it to apply and get an enforceable right. Because if you, if it goes to examination, it won't be able to be certified because we will find the earlier design application of the earlier registered design, and that will knock it out. If your design has been published previously, you won't be able to get protection for it.
Veronica:
And we have a question about design uh, sorry, IP rights for mobile applications. "What are their options there?"
Derek:
First option would be to talk to an IP professional. They'll be able to guide you down the right path. Some of your options might include a patent, might include trademarks. There might be something you can do with designs. Generally these are difficult um graphic, what we call graphic user interfaces, are an untested or somewhat untested area of law with designs. I'm not going to get into those here.
Veronica:
Okay if you don't have any other questions, I might just navigate, do you mind skipping forward to the last slide of the presentation to our contact details? So if you think of any other questions later today or whatever, feel free to email us at outreach@ipaustralia.gov.au.
Thank you so much for everyone who joined today and thank you so much to our presenters Derek and Sarah, and have a lovely day everyone. Thank you.