Businesses come up with new products all the time. However, if the article is particularly unique in its overall appearance you might want to register the article as a design to protect it from unscrupulous copying in the marketplace. This includes aspects of shape, pattern, ornamentation and configuration. Design registration (once it is certified) gives traders a monopoly over the look of their design for a period of up to ten years.
Before you release it publicly (meaning before posting images of it online or displaying and selling it).
It is critical that you keep you design a secret if you want to legally protect it. This can be challenging in the development stages where you want to disclose it to people for marketing, feedback and manufacturing purposes. This is where confidentiality agreements (also known as NDAs or non-disclosure agreements come into play. Our firm can draft watertight agreements for you.
No. This needs to be avoided as it will not be tailored to your circumstances and therefore may not be effective. Moreover, this will usually infringe someone else’s copyright.
This is right. The first and most important step is applying to register the design as soon as you have it finalised in a form that you are happy with. It is advisable to use lawyers as it is an ethical process. The registration defines the scope of protection.
The second step is not always done but is necessary if you want to legally enforce your rights. It involves requesting that your design be examined and certified.
No, only the appearance of a product. You can come with an idea for a dress with six panels or tamper free package. However, it is only the specific appearance of the product you register as a design that is protected. It does not protect the underlying idea.
There is no one area of law that does protect ideas or concepts as such. Sometimes however confidentiality agreements can assist where for example you come up with an idea and disclose it to someone to see if it is viable.
Again, the answer is no. This is what patents are for – they protect inventions. You can however protect the look of an article that has functional properties. For example, take the example of the famous circular shape WEBER barbeque (Weber-Stephen Products Co. owns several design registrations for its barbeques). The appearance of the BBQ is protected by the design registration but not the functionality (that is the working of a device that cooks food by applying heat from below).
While the process may appear to be straightforward as it involves supplying image and details of the design, it is very technical and therefore best to use a patent or trade mark attorney or IP lawyer.
Typically, IP Australia, the government body that administers design registrations in Australia take around 4 weeks to examine an application for a design registration to check that the formalities have been complied with. Sometimes, issues need to be dealt with before it can be registered. The certification process can take longer.
A design registration lasts for 5 years from the time of the original application date. At the completion of the initial registration, the owner of the design can register the work for a further 5 years after which time it will lapse. Once the ten-year period has passed, anyone can use that particular design.
The designer who created the design can apply for registration as an individual or company can apply if it owns the design. The application must be made in the prescribed form to IP Australia and contain the appropriate drawings or images of the design and meet certain formalities.
We can assist you with every step of this process from application to certification.
Design registration protects your right to make, sell, hire or otherwise dispose of the design and prevent others from doing so without your prior consent.
If a design is substantially similar in overall impression to a registered design, this can amount to an infringement. IP Lawyers can help determine this based on the cases.
If you suspect you designs have been copied, you should promptly seek legal advice.
The response may not involve court proceedings. Typically, the first step would be to send the offending party a Letter of Demand, basically a legal letter that asks the other side to stop the conduct and makes other demands, sometimes for money. In some cases, however where large scale copying is involved, issuing court proceedings may be required to protect you rights, even if the matter does not proceed to trial.
If you do not use a lawyer you take the risk of saying the wrong thing and this can be used against you later. There is also a legal prohibition on the making of unjustified threats including groundless threats to someone else that they have infringed your design.
A court may impose several remedies for copying a design including:
- an injunction (stopping the infringement or copying);
- awarding damages (money); or
- an account for profits (a share of the profits earned through the copying of the design).
A court may also award additional damages as it sees fit depending on the circumstances of the copying, particularly if the copying has been flagrant or the other side ignores legal letters.
Then it may be too late. You may have to reply on other laws that may not be as effective. Seek legal advice.
No only Australian. Read more at Protecting your IP Globally
If you have any further questions about this topic, please give us a call or email us at info@sharongivoni.com.au