Design registration could save you plenty of headaches

I have a client who designs and manufactures children’s wall stickers. The designs are unique but simple. But they did not stay unique for long as one particular design has set the hearts of copycats worldwide racing. From alarm clocks in Poland to aprons in South Melbourne, identical copies of my client’s designs are everywhere.

My client has export aspirations and so it is unacceptable that there be inferior products out there bearing her designs. This has the affect of diluting her brand and the potential for significant loss of profit for her business.

The copies clearly breach my client’s copyright. However, it is difficult and expensive to sue for breach of copyright if the initial scary lawyer’s letter does not work.

So what is a better option? You have a couple of options and in this blog I will introduce you to the concept of design registration. Next time, I will explore the concept of Shape Trade Mark registration, both of which would protect my client more easily than relying on copyright protection.

If your business is based on original design, it is worth looking into registering your design through IP Australia before the product goes to market.

Design registration is used to protect the visual appearance of manufactured products not how it works – for this you need to obtain a patent. Registration initially protects your design for five years, with renewal possible. There are a number of steps to go through namely registration, examination and certification. Once your registered design is examined and certified, you may sue for infringement if another person uses your registered design without your permission.

As a registered owner, you:

• have the exclusive right to use the design specified in your registration;
• have the exclusive right to authorise other people to use your design as specified in your registration;
• have a registered design that is your personal property that can grow in value and be sold;
• have a registration that covers the whole of Australia or another country if you apply to that country; and
• can take action to stop other people using your design after examination and certification.

To register a design, it must be new and distinctive.

‘New’ means a design has not been publicly used in Australia or published in a document anywhere in the world before the priority date.

‘Distinctive’ means your design is not substantially similar in overall impression to any design in the prior art base.

You don’t have to request an examination upon application for design registration. However, if your registered design is infringed (ie. used or copied by someone without your authorisation), or you believe it is being infringed, you should immediately request an examination. Once your registration is examined and certified, you can then take action against the competing party. However, if your registered design is examined and found invalid, your registration will cease and you will not be able to take any action.

Design registration is not simple but an invaluable tool if you are in businesses such as fashion design, textile design, industrial design or other industries that are reliant on original design.

Lynda Slavinskis is an outgoing, intuitive and commercially savvy lawyer. She has worked in-house at Sussan Corporation and Tattersall’s and now assists small and medium businesses with import, export, leases, franchising, employment and general business advice as principal solicitor of Lynda Slavinskis Lawyers & Consultants. Lynda is on the Victorian State Government’s Small Business Advisory Council.

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