Without appropriate intellectual property protection, your competitors may be well within their rights to copy your new products. An Australian design registration is a simple form of protection to guard against the imitators.
Australian design registrations are the Australian equivalent of design patents available in other countries. They protect the appearance of a product and can last for up to 10 years. With the help of an experienced patent attorney, filing for design registration is straightforward and of lower cost than many imagine.
Design registrations do their best work for you when you don’t know about it. Simply marking a product “Registered Design No. XXX” deters would-be imitators without costing you another cent. Reputable competitors will respect your legitimate rights, whereas others will focus on avoiding the expense of a dispute. Of course, it is an offence to falsely mark a product.
If the imitators persist despite the deterrent value of a design registration, you will be far better off with a design registration than without. Generally speaking, Australian copyright does not guard products against imitation once the product is in commercial production. So, without design registration, once you are in production imitators may be allowed to copy so long as they do not cause confusion amongst purchasers of the product (e.g. so long as the imitators clearly mark their copy with their own trade mark).
Enforcing a design registration is typically simpler than enforcing copyright in a product or taking action based on confusion amongst purchasers. Hence, even if due to some unusual circumstance copyright may be effective, or if there is some suggestion of the imitator confusing purchasers, having a design registration in place may well reduce the costs of enforcement.
More practically, a design registration reduces the likelihood of the dispute ever reaching a Court. Very often intellectual property disputes are resolved with a robust exchange of letters between the innovator and the imitator (or their intellectual property lawyers) without fully fought Court proceedings. During this exchange the imitator is under the constant threat of Court proceedings being initiated (and the costs and anxiety that go with them). Even if there is some other right on which you might initiate Court proceedings, a design registration greatly enhances this threat and improves the likelihood of the imitator complying with your demands (e.g. your demands to stop selling product and/or pay a royalty for the products they have sold or will sell).
Filing an Australian design registration is deceptively simple. It involves identifying the product to which the design relates and filing “representations” of the design, such as photographs, drawings or renderings. Optionally a “statement of newness and distinctiveness” (SOND) can be filed. The SOND serves to identify features or portions of the design which must be given particular regard when assessing whether another product infringes and/or whether the registration is valid.
Whilst filing can seem simple, rights can be lost if the contents of the documents are not carefully considered by an experienced patent attorney. By way of example, filing black and white line drawings instead of photographs reduces the likelihood of the scope of protection being limited to particular colours. On the other hand, line drawings may not adequately convey the details of curved surfaces.
An experienced patent attorney will discuss the filing documents with you and how they can be manipulated to improve the prospects of obtaining valid design registration of commercially effective scope. For example, renderings showing the product in a neutral colour in conjunction with a SOND identifying the shape of the product may be appropriate where protection (not limited to colour) for a product having curved surfaces is of interest.
Design registrations protect the appearance of a product. They do not guard against imitators copying important functional features of a product if the imitators can do so in a product that looks sufficiently different. Patents (referred to as utility patents in the US) may guard new functional features against imitation.
Likewise, design registration of a product does not guard against competitors passing their products off as yours by using a deceptively similar product name. Trade mark registrations guard against competitors using identical or deceptively similar trade marks.
Patent, design and trade mark protection can be pursued in parallel. This is often recommended. Click through for further information on the various forms of intellectual property protection.
If design registration is of interest, it’s important to keep the design secret until a design application is filed. It’s also important to find the right intellectual property professional to assist. Patent attorneys assist their clients with patents and designs. Trade mark attorneys assist their clients with trade marks. Intellectual property lawyers assist their clients in relation to a range of rights including copyright and trade marks and rights related market confusion.
If you are not sure which intellectual property professional is right for you, fear not. Whilst intellectual property professionals have their own specialities, an experienced professional will have a sound working knowledge of the other intellectual property rights and be well placed to identify potential issues beyond their speciality and refer you on to a suitable specialist when required.
This piece is by Benn Mott, a Principal with Wadeson who are a firm of Australian & New Zealand Patent Attorneys & Trade Mark Attorneys based in Melbourne, Australia.
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