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Dreaming of design applications?

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New and distinctive visual aspects of a 3-D product’s shape, configuration, pattern or ornamentation can be protected through design registration.  Owners of a registered design have certain exclusive rights to eg. make, use, hire, import, and sell the design for up to 10 years, and thereby have a valuable business asset to sell, assign or licence.

There has been limited judicial interpretation of the relatively new Designs Act 2003 (Cth).  However, in light of recent decisions based on the repealed Designs Act 1906 (Cth), there are many factors to consider when looking to maximise the ability to protect and enforce a registered design.  Some of these factors are highlighted below and MST can assist you with all aspects of the design process.

1.         Prior Disclosure

In order to be registered, a design must be new and distinctive.  Subject to certain exceptions, if a design is used or published before a design application is made, it may jeopardise the applicant’s ability to obtain a valid registration.  One exception is where the applicant has exhibited the design at an officially recognised international exhibition (criteria apply).  In such circumstances, a design registration may still be valid if the application is made within 6 months of the date first exhibited.

Therefore, it is important to lodge a design application before an applicant uses or publishes their design.

2.         Statement of Newness and Distinctiveness

When listing the aspects of newness and distinctiveness in a design application it will be important to detail particular features claimed by the applicant to define the scope of protection requested.  Members of the public wanting to make a new product should be able to rely on this statement to avoid infringement.  In particular, during infringement proceedings the court will likely assess the allegedly infringing product against relevant prior art with a particular emphasis on those features claimed by the applicant, at the point of registration, to be new or distinctive as opposed to any other features of the product.

3.         Entitlement

In order to actively avoid design entitlement issues, written documents confirming the ownership of developed designs should be prepared.  For example, employment agreements should clearly detail ownership arrangements for designs created by all employees (whether they be engineers or sales persons) as part of, or related to, their employment role.

In another example, if you seek assistance from a third party for aspects of your design, clear written obligations for design ownership should be agreed ‘up front’ to avoid any expensive misunderstandings – particularly when your product becomes commercially successful.

MST can assist you in protecting and enforcing your design registration to maximise the protection offered for the new and distinct features of your 3-D product.  Design registration is no longer a dream!

Contact our Intellectual Property team for further information.

Author:  Noelene Treloar