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Designs protect the two- and/or three-dimensional features of an article (or product), which may also be regarded as the overall appearance of the article. A design in the legal sense requires that the two- and/or three-dimensional features are applied or embodied in the article. For example, while the application of a particular colour pattern to a container may be a registered design, a print-out of the same colour pattern on a sheet of paper, i.e. not applied to a container, is not protected by that registered design.

Designs are intended to protect aesthetic aspects of the article, not the functionality of the article, which may fall under the scope of patent protection instead. Aspects of the overall appearance of the product which serve a purely functional purpose would be excluded in judging whether a design can be protected, and in determining the extent of protection conferred if the design is successfully registered.

With trademark protection available for 3-dimensional objects, colour etcetera, there may be an apparent overlap between designs and trademarks. The overlap between designs and trademarks is not regulated by law as such. Rather, due to the different applicable tests for the validity of designs and trademarks, they can co-exist independently and thus potentially provide a more significant scope of protection for the overall appearance of a product.

In order for the design to be valid, a number of requirements have to be met, including that the design be new. Similar to patents, being "new" may be understood as meaning that the design must be different from designs that have been made public before, referred to as the prior art base. The time at which this is judged is the time you (first) file a design application, referred to as the priority date.

What you have made public before you file a design application may also form part of the prior art base. Therefore, you should file your design application before you make your design public.

In addition to being new, a design must also be "distinctive" when compared to the prior art base. In other words, the design must be "different enough" from the prior art base to be validly registered.

In practice, design applications in Australia are not examined for being new and distinctive before you can request to have your design registered. They merely have to pass a formalities check. The question of being new and distinctive is significant during the process of certification of a registered design, which does not occur automatically. This makes the process for obtaining registered designs quite different and expedient compared with patents and trademarks.

Certification of the registered design must take place before the design may be enforced. It is noteworthy that a third party may also request examination of a registered design, which can be used to challenge someone’s registered design before it may be enforced against your competing product.

Would people want to use the article embodying your design because of its overall appearance and not (just) because of its function? If your answer to this simple question is yes, chances are your design may be distinctive. You should then consider engaging a patent attorney (sometimes colloquially referred to as an IP lawyer or IP attorney) to discuss starting the process of applying for design registration before making your design public.

NOTE: The information provided above does not constitute legal advice. If you do require legal advice, please contact us at inquiry@koch-ip.com.au to arrange a consultation.