What is a design?

A design is the visual appearance of a physical item. The design itself is not physical but the item it represents is physical.

An example of a design is the designer’s drawing of a new dress. The dress that is made from this design is the physical object and the drawing or plans are the visual appearance, the design.

A design of a dress

A physical dress

What is a design right? 

The law is able to protect the design of an object through a system called design rights. As described above the design of an object is its visual appearance.

A design right protects the overall visual appearance of a physical object. In order for protection the design needs to be registered with IP Australia, the government body that operates Australia’s IP system. Registration is intended to protect designs which have industrial or commercial uses, products.

Design registration protects how a product looks, while patents protect how the product works. Patents are not covered here, find out more by following this link.

Your design can be registered only if it is new and distinctive and unlike anything already in the global marketplace.

A registered design can be a valuable commercial asset. Once it has been certified after examination, you can stop others from using or copying your design.

A design right offers a maximum of 10 years protection and is publicly viewable on the IP Australia website after registration.

 

Who is likely to need a design right?

Anyone creating unique visual products they want to protect, for example articles of clothing, and is planning on selling them commercially.

Every time you register a design right it takes time and it costs money. Therefore it is worthwhile thinking first about whether it makes sense for you to apply for protection. Often design rights form part of a wider IP strategy.

Some things to think about:

  • Is there commercial value in the item that I want to protect?
  • How important is it to me and my community that the design be protected?
  • Is there cultural value in the item that I want to protect?
  • Is it likely that someone will try to copy my design?

 

Ngali at Afterpay Australian Fashion Week 2021

How to file a design right

It is important that you don’t go public with your design before you apply for a design right – you should keep your design a secret and not show it to the public before you seek registration. The two step process of registration and certification of design rights is managed by the federal government body, IP Australia.

Protecting your design is a two step process:

Step 1: Registering your design

    • At this step IP Australia checks that your design qualifies as a “design” and it registers it in their database.
    • This step does not protect your design which means others can still use your design. To protect it you need to go to step 2.

Step 2: Certifying your design

    • At this step IP Australia examines your design to check that it is new, distinctive and has not been shared publically already.
    • If your design passes the examination then this step does protect your design and you will have the right to stop others from using it.

Many people register a design and do not choose to certify until they have a need to enforce.

It is important to note that there is a fee with IP Australia for each of these steps. Information on this can be found here.

You can talk directly with people from IP Australia for free on their Yarnline. Information on this is found here.

More detail from IP Australia on this topic can be found here.

Design and copyright overlap

The interaction between copyright and designs is complex and varies based on individual situations. Generally, if you are looking to commercialise a product you need to seriously consider that you may need a design right as it can affect your copyright protection. 

Unless dual protection is possible, copyright protection is lost when a design is registered. In addition to this a work of artistic craftsmanship that has been protected by copyright will lose that protection if it is later manufactured on a commercial scale, which is deemed to be 50 units or more. 

Dual protection is possible for designs of two-dimensional patterns that result in the reproduction of an artistic work when applied to the surface of an article. As an example, if you have painted an artwork, you have copyright in that artwork piece. If you then choose to apply that artwork to a tshirt to sell, you may wish to apply for a design right to protect the tshirt product. This would mean an enforceable right to stop others from making tshirts that look similar.  

By registering a design, for example a design for a fashion garment, you get a monopoly in that design. However, unlike with copyright, the protection is only for a maximum of ten years. Relying on just copyright protection means you don’t obtain a monopoly. If you and another person independently prepare a sketch of a similar nature, neither infringes copyright in the other’s sketch. The registration of a design gives you a monopoly in that design and then you can prevent others from applying the design, or any imitation of it.  

It’s important to be aware of your IP assets and how they interact with each other. This can be a complex area and you may wish to consult a legal professional if you are unsure.

More detail on the interaction between copyright and design in a fashion context can be found here.