Written by Alyce Evans and Principal, Jennifer Tutty
When designers think about protecting their designs, the first word that comes to mind is usually: copyright.
However, while Australian copyright law is one way to protect designs, it is not the only way. Additionally, it can become limited in scope when designers seek to commercialise their designs.
In this blog, we explain why all designers should learn about design law and registration. We also provide a guide on how to register and certify your designs.
How to Protect Your Designs: The Limitations of Copyright
Many commercial products start their journey as drawings, sketches or patterns. Under Australia’s Copyright Act 1968 (Cth) (Copyright Act), these may be protected as ‘artistic works’. The copyright owner has the right to reproduce that work in another form. This means that they can create a three-dimensional product (such as a ring, dress, chair, car, or anything and everything in between) based on the initial artistic work.
If that product embodies the visual features of shape and configuration of the artistic work, the product is a ‘corresponding design’ under the Copyright Act.
If you make more than 50 of that corresponding design (product) and market it to the public, then you have ‘industrially applied’ it and the design upon which it was based (ie. the drawing or sketch) is no longer protected by copyright.
Of course, there are exceptions that apply, such as where you are creating a ‘surface design’ or a ‘work of artistic craftsmanship’. However, generally, all designers should consider whether design registration is required, as they may not be able to rely on copyright protection down the track.
Example: Fashion Design
Let’s imagine you design a dress, which features a unique silhouette. On that dress, is a print created by a graphic designer or perhaps a photo taken by a photographer.
The print or the photo applied onto that dress may be protected by copyright as an ‘artistic work’ and also classed as a ‘surface design’.
The design drawings and sketches of that dress (ie. your design) are likely to be protected by copyright as ‘artistic works’ (initially).
The dress you make based upon that design is known as a ‘corresponding design’. If you make more than 50 dresses to sell commercially, then the design (i.e. the drawings and the sketches from which the corresponding design is based) will lose copyright protection.
What about the dress itself?
An ‘artistic work’ under the Copyright Act is limited exclusively to: paintings, sculptures, drawings, engravings, photographs, buildings and models of buildings, and works of ‘artistic craftsmanship’.
In other words, fashion garments (and many other items that designers create) are not classed as ‘artistic works’. Unless you can prove that the dress itself is an original ‘work of artistic craftsmanship’, which is a difficult threshold to meet, the dress isn’t protected by copyright.
What about the print or the photograph featured ON the dress?
Even if the dress itself isn’t protected by copyright, there is case law to suggest that images, patterns, photographs or embroidery applied onto something else (such as the dress) are ‘surface designs’.
These surface designs can retain their own copyright protection as ‘artistic works’, because it is arguable that their shape and configuration is not reproduced as a corresponding design. Rather, they are an artistic work applied onto the surface of the corresponding design.
Thinking like an IP lawyer
When thinking about this, the key is to separate out the potential IP involved, namely:
1. The dress design – i.e. sketches and drawings of the dress. These may be ‘artistic works’ and initially protected by copyright.
2. The product – i.e. the dress itself. This is a corresponding design of the dress design. It is unlikely to hold copyright protection unless you can successfully argue it is a work of ‘artistic craftsmanship’. If more than 50 of this corresponding design are made for commercial purposes, the original design (i.e. the sketches and drawings) will also lose copyright protection.
3. The print or photograph applied onto the dress. This may be classified as a ‘surface design’ and retain its copyright protection as an ‘artistic work’, even if it is applied onto more than 50 dresses which are made for commercial purposes.
So what can you do?
How do you protect a design that you’re planning to commercialise?
Enter: Designs law.
What is Designs Law?
‘Designs’ are a type of intellectual property (IP), which can be protected under the Designs Act 2003 (Cth) (Designs Act). In this context, a ‘design’ refers to a design relating to a product.
The Designs Act protects the overall appearance of tangible products, based on a combination of one or more visual features. These features include the shape, colour, configuration, pattern and ornamentation of the product – but do not include the feel of the product or materials used to create it.
For example, it may be used to protect original designs for fashion, mugs, lamps, tables, cars, appliances, jewellery, equipment, and much more.
Due to the limitations of copyright when it comes to ‘designs’, the Designs Act and its application is something that all designers of commercial or industrial products should become familiar with.
Factoring IP protection and possible design registration into your design process from the outset is the best way to protect your hard work.
How to Protect your Design – Step 1: Registration
While copyright protection is automatic in Australia, if you want to protect your design, you need to register it.
Australia has a Registered Design System, which is required to secure protection of your designs.
The first step to protecting your design is to apply for registration it with IP Australia. When applying, you must provide visual representations of the design and pay the application fees.
Representations can include well-defined drawings, graphic digital images and photographs, which clearly depict the product to which the design is applied.
These must be clear and precise and show different views of the design, so that all angles and aspects are represented.
There are several other requirements for how designs should be represented. Further information about this can be found on IP Australia’s website here.
Statement of Newness and Distinctiveness
It is also advisable (although not mandatory) to include a Statement of Newness and Distinctiveness with your application. In this statement, you should identify particular features of your design that are ‘new’ and ‘distinctive’, when compared to other designs that form the ‘prior art base’.
In other words, you will need to explain why your design is not identical to the prior art base (i.e. new), and why it is visually unique when compared to the prior art base (i.e. distinctive). As the prior art base extends to designs shared publicly anywhere in the world, this can be a tough threshold to meet.
Further information about Statements of Newness and Distinctiveness can be found on IP Australia’s website here.
IP Australia will assess whether your application meets the Design Act requirements. If it passes this test, your design will be registered, and you will be issued a Certificate of Registration.
To improve your chance of having your design registered, we recommend having your application drafted or reviewed by an IP lawyer.
It is important to know that registered designs are not enforceable. In other words, registration alone does not give you the right to take legal action against people using your design. In order to enforce your rights, your design needs to be certified.
Onto step 2.
How to Protect your Design – Step 2: Certification
Once your design is registered, you can put in a request for your registered design to be examined for certification.
While certification is optional, we recommend all designers consider it. You are only able to enforce your legal right in a design or take action against others using your design without your permission, if it is certified.
If you request an examination, a design examiner will determine whether your design meets certain legal tests and criteria.
They will consider the ‘visual features’ and whether the design is ‘new and distinctive’, when compared with other, existing designs (known as the ‘prior art base’).
The prior art base includes all designs used or registered in Australia or published anywhere in the world. If you have published or disclosed your own design before applying, it will also form part of the prior art base (unless a grace period applies).
As a result, the threshold of being ‘new and distinctive’ can be a high bar to reach. If this test is not satisfied, then the design registration will not be certified.
If your design passes this test, congratulations! IP Australia will then certify your design and issue a Certificate of Examination. From here, your design is certified and you have legal rights to prevent others from using it.
Prior Art Base and the New Grace Period
In March 2022, Australia introduced a grace period, which allows designers to publicly share their designs (under certain circumstances) without inadvertently restricting their own ability to later apply for a design registration.
For example, if the grace period applies to you and you publish your design on social media, you will still have 12 months to apply for registration. If you do not apply within that time, your publication of the design will form part of the ‘prior art base’, and bar your ability to register the design.
Does the Grace Period Apply to your Designs?
The grace period came into effect on 10 March 2022.
Importantly, it only applies to:
– Disclosures / publications of designs that occurred on or after this date; and
– Applications for registration filed on or after this date.
This means that if you shared your design on 9 March 2022, unfortunately, it is now part of the ‘prior art base’ that will be considered if you try to register it.
For those who disclosed their design on or after 10 March 2022, you have 12 months from the date of disclosure to apply for design registration, otherwise, your disclosure will also enter the ‘prior art base’.
In other words, from 10 March 2022 moving forwards, you can publicly share your designs without immediately barring your ability to later register the design. However, if you do decide to share your design, you will need to apply for design registration within 12 months.
When you do apply, there will also be additional requirements you must meet. This includes submitting a declaration detailing all relevant information about your prior publication / disclosure of the design.
We recommend all designers take this into consideration before sharing or disclosing any of their designs.
Further information about the new grace period can be found on IP Australia’s website here.
Top Tip 1: Be Proactive
For many designers, IP protection is an afterthought in the design process. However, as you now know, being proactive is crucial. If you believe you have a unique design, which you want to commercialise (and protect!), you will need to apply for design protection asap.
The best time to do it is before that product goes to market. For designers, it’s crucial to factor IP protection into your business strategies and timelines, making it a priority at the outset.
Fortunately, due to the new grace period, if you disclose a new design on or after 10 March 2022 (and file an application on or after this date), you will have 12 months to apply for design protection in Australia, before your disclosure finds its way into the prior art base. For designers who have already shared their design since this date, the clock is ticking. If you want to protect these designs, you should make registration an immediate priority.
Top Tip 2: Seek Advice from a Professional
As this is a complex area of law, speaking to an IP lawyer at the beginning of the design process will help you to develop the best strategy to protect your creations. They can provide tailored advice on how copyright and designs law will affect your specific work or apply in your industry.
Further, they can conduct a legal pre-assessment of whether your design is likely to be accepted for registration and/or assist you with registering your design.
If you have recently disclosed a design to the public, which you are selling or plan to sell, and want to protect, we recommend you contact an IP lawyer to seek advice on the next steps to take.
1. Think about IP protection about the beginning of your design process.
2. As part of your business strategy, seek advice from an intellectual property lawyer about how to protect your IP.
3. If you create a product based on an ‘artistic work’, you are reproducing that artistic work in another form. If that product embodies the visual features of shape and configuration of the artistic work, this is a ‘corresponding design’ under the Copyright Act
4. Copyright does not protect all types of ‘designs’.
5. Generally, if you produce and market more than 50 products from a corresponding design (industrial application), it may lose copyright protection.
6. You may be able to register a corresponding design as a design under the Designs Act if it meets certain criteria.
7. Designs must be registered and certified in order to be fully protected and legally enforceable.
8. Australia has introduced a new 12 month ‘grace period’ for designs disclosed on or after 10 March 2022 (and applications filed on or after 10 March 2022). We recommend acting fast to secure protection of these designs.
Written by Alyce Evans and Principal, Jennifer Tutty
Published 9 June 2022
The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.