The Australian Designs Act affords protection of the shape, configuration, pattern and ornamentation of a product which is defined as a thing that is manufactured or hand made. The protection afforded is judged by the eye and not by the function.
If you value the aesthetics/appearance of your new product either because of inspiration or through effort to bring it into existence and you don't want it copied you should consider obtaining design registration before the design is published as it is a simple, inexpensive and effective right.
COPYRIGHT v REGISTERED DESIGN
Australia has copyright legislation as well as design legislation.
The Designs Act requires registration of a design which is intended to be incorporated in a product to be commercialised.
If you fail to register your new design you lose your rights and the product can be copied.
On the other hand the Copyright Act automatically provides protection for original literary, dramatic, musical or artistic works but only in respect of unauthorised copying. The design registration is more comprehensive embracing copies as well as similar products whether copied or not.
The obvious appeal of relying on copyright protection is that it is automatic and subsists for 70 years after the death of the author/designer, compared to a maximum life of 10 years for a registered design.
Unfortunately these two form of protection often overlap and in general terms there are overlap provisions in the Copyright Act which extinguish copyright protection for any product embodying a corresponding design (corresponding to the copyright for the artistic work) which has been applied Industrially or included in a patent specification, presumably proving an intention to do the just that. These overlap provisions are complex, unloved and evolving.
For practical purposes, if during the next 10 years you want to be able to stop copiers of your new product by taking them to Court alleging infringement and damages, I recommend that you file for a design registration.
Recently a plug for a boat hull was held by the High Court of Australia not to be a work of artistic craftsmanship such that the exemption to the copyright/design overlap failed and unauthorised reproduction of that shape from a mould taken from the plug was deemed legal, no design registration existed.
If you need more information on these overlap provision there is much discussion on the net by learned commentators. Alternatively a legal opinion from a barrister may be appropriate if circumstances warrant the expenditure.
REQUIREMENTS FOR VALID DESIGN REGISTRATION
In order to qualify for registration, a design must be new and distinctive at its filing date compared to earlier designs published in a document in or outside Australia and designs publicly used in Australia.
As for patents, searches can never be conclusive, unless you find the exact same thing, but should be conducted to minimising risks.
WHO MAY APPLY
The person entitled to apply for registration is the owner of the design who must be the author or have derived ownership through employment or contract with the author(s). It is very important to settle ownership details before a design application is filed as ownership disputes at a later date can be very damaging. Both copyright and designs may be assigned and dealt with as property.
The test for infringement involves a visual comparison of the unauthorised product to see if the registered design has been incorporated in the product either identically or in a manner which makes a substantially similar overall impression to the registered design. Inclusion of a Statement of Newness or Distinctiveness in a registration also needs consideration.
Infringement can occur by making or offering to make the product, importing the product for sale, selling, hiring or otherwise disposing of the product or offering to do that, using the product in trade or business or keeping a product for doing any of the foregoing.
If design protection is required in any other country an application must be made in that country and the time limit for doing that in most circumstances is within 6 months of filing the Australian application. If made within this period, the convention period, the overseas registration retains the Australian filing date as its priority date. If filed outside that period the priority date of the overseas application will be its filing date and publication of the design in Australia in the meantime may invalidate the overseas registration.
REGISTERED DESIGNS A brief overview and costs
A design registration provides protection for the shape, configuration, pattern or ornamentation of a product. The protection afforded by a Registered Design is judged mainly by reference to the illustrations in the registration and thus the preparation and selection of these illustrations is very important. The protection provided extends to other products which are substantially similar in overall impression to the registered design. This is a matter to be judged by the eye.
Design applications proceed to registration if the applicant requests registration and the application documents meet formality requirements. However to be valid a Registered Design must not be identical to any design previously published in a document anywhere in the world, nor previously used in Australia. In addition the design must not be substantially similar in overall impression to any design previously published anywhere in the world, nor any design previously used in Australia.
In order that a Registered Design has a reasonable presumption of validity the owner must submit the registration to examination, seeking a Certification of Examination. This action may be taken at any time and must be taken to obtain the legally enforceable exclusive right to use, licence or commercialise the design.
As for patents, the registration process requires a series of exchanges between the Designs Office and the client before a settlement ie. a certified Registered Design is achieved and further costs are likely to be incurred in this process.
Designs registration should always be considered when time and effort has been expended to produce a product which will be sold in numbers as a simple and inexpensive means of being able to stop others directly copying your product.
For detailed information regarding designs I recommend viewing www.ipaustralia.gov.au, the Official Patent Office site.
The charges indicated below are for the major predictable costs and are inclusive of official fees and GST and are provided on the basis of Tax Invoice paid prior to filing specified action.
Preparing and filing a design application, $650 + cost of illustrations
Preparing & filing Request for Registration, $125
Filing a request for Examination, $750
Renewing for 2nd. five year period, $695