ask the expert | How do you protect a product design?

by guest author Jacqui Pryor

I’ve previously written about trademark registration, and have touched on copyright so now it’s time to talk about protecting the design of a new product you’ve come up with. 

What is a design?

A design is the overall appearance of a product – its shape, configuration, pattern or ornamentation. A fully certified and registered design protects the way your product looks. To be considered valid it must be new and distinct.  New means that the design hasn’t been publicly used in Australia (or respective country) and hasn’t been published anywhere in the world. (For this reason, if registration in multiple countries is necessary the timing is critical. The publishing of your design application in one country during the registration process could see overseas protection invalid). Distinctive means that it is not substantially similar in its overall appearance and impression to other designs already in the market. 

The registration process 

In Australia registration of a design is pretty straight forward. You apply and then the government department undertakes a basic formalities check and will then register your design. This allows you to claim the design is registered and to exploit it accordingly. However, to obtain legally enforceable rights to the design (i.e. so you can take action against others who might be infringing your design) you need to then request, as a separate step, that the government department examine that design. It is at this stage they do a thorough check to ensure the design is valid; that it is new and distinct. If your design passes it will be certified and then you have the full legal rights. Most countries conduct this examination as a part of the standard process for design registration rather than have the two separate stages like we have in Australia.  Because Australia separates these two stages, it’s also important to note that another person can actually request the examination of your design if you haven’t done so. They may do this if they feel your design is not a valid design and feel you should not hold the registration. 

TOP TIP:  Keep any new product design a secret until you’ve sought appropriate advice and/or filed necessary applications. Disclosing the details too soon may invalidate any application for design protection you later file.

Lifespan of a Design

Unlike trademarks (which, in most countries, can be protected indefinitely) Designs will expire. The registration period varies from country to country and in Australia is a maximum of 10 years from the date of application.  After this period others may copy your design without fear of infringing your design rights. Registering the brand name as a trademark will ensure others cannot apply the same name to the product after the design registration expires. Depending on the nature of your product, other protections may also be available that outlive the design.  

What Designs Don’t Protect

Designs really do simply protect the way something looks – its appearance. A registered design won’t protect:

The materials used to make your design; 

The way your product works or functions 

The purpose or concept behind your product design 

Protection for the way your product works:

If your product involves inventive or innovative steps, not yet appearing in the public domain it may also be eligible for protection as a Patent. As with designs, patents must be new so again it’s important to seek appropriate advice if you believe your product may involve properties eligible for protection as a patent. A patent is any device, substance, method or process, which is new, inventive and useful. So rather than the look of your product a patent may be appropriate to product the way your product works or its functions. Professional advice should always be sought in connection with patents, as they are a complex area of Intellectual Property law. 

Jacqui Pryor is the director of Mark My Words Trademark Services. Jacqui has 13 years of experience in Australian and International trademark matters and her company aims to provide affordable, friendly and reliable services to small businesses in an area often assumed reserved for big business. Click here to receive your free trademark search.