Protecting your Designs

There are two regimes by which you can seek to protect your design, namely:

• copyright regime.
• design regime.

If you wish to protect a design you will need to decide which regime best suits your design. This decision will depend on what use you plan to make of the design. In particular, if you are considering mass producing your artwork or design in relation to a product, it is important to understand when you can rely on copyright protection, when you should register your work as a design, and when you have the option of both copyright protection and design registration. 

Some of the differences between design and copyright protection are:

• Design registration requires formal application for registration of the design before rights are obtained and substantive examination before rights can be enforced whereas acquiring and enforcing copyright does not involve a formal registration process.
• Design protection lasts for up to 10 years from the date the application for registration is lodged. Copyright protection generally lasts for 70 years after the death of the artist.
• Design registration requires the payment of a fee, whereas copyright protection is automatic and therefore does not require any payment of a fee.
• Design registration provides protection against someone else applying or embodying the identical design or a design substantially similar in overall impression to the registered design in a product. Design protection gives the design owner a monopoly in the visual features of shape, configuration, pattern and ornamentation of the design. In contrast, copyright only provides protection against somebody copying your work and so requires you to show that actual copying has taken place. Therefore, unlike design protection, copyright does not provide protection against someone independently arriving at the same piece of work.

Please note this information sheet is based on the current legislation, the Designs Act 2003 (Cth), which commenced on 17 June 2004. Designs registered under the old legislation, (the Designs Act 1906 (Cth)), are largely unaffected by the Designs Act 2003 and validity and infringement of these designs will continue to be assessed using the old Act.

Copyright protection

For copyright to subsist the following elements must be satisfied:

• there must be a work as recognised by the Copyright Act 1968 (Cth). “Work” means a literary, dramatic, musical or artistic work. Naturally, in the case of designs, the work in question will be an artistic work;
• the work must be in material form and not be merely an idea or theory; and
• the work must be original (that is, the work must not copied from another person and must originate from the person who claims copyright in the work).

Copyright arises once these elements are satisfied. Accordingly, there is no requirement for registration. Copyright protection generally lasts for 70 years after the death of the artist.

For a work in which copyright subsists to have been infringed there must be:

• direct or indirect copying of the work in which copyright subsists; and
• the infringement must be a “substantial part” of the copyrighted work.

Therefore, copyright does not provide protection against someone independently arriving at the same piece of work, but instead requires some element of copying.

Design protection

Generally, people seek to register designs which have some industrial or commercial use. If you plan on making multiple copies of your work, which could be anything from furniture and jewellery to a printed textile or ceramics with an applied motif, then carefully consider the option of registering it as a design.

Design registration protects the appearance of a product and not its function. The fact that a visual feature is associated with the function of a product does not disqualify it from registration. A unique shape for cutlery handles or the backrest of a chair, are examples of manufactured products where the design may also enhance the products’ function.

Registrable designs

Registered design rights are concerned with protecting the visual appearance of manufactured products. Registrable designs are designs that consist of new and distinctive visual features of shape, configuration (3D), pattern or ornamentation (2D) of a product.

For a particular design to be new it must not be identical to a design publicly used in Australia, or published in a document anywhere, before the application to register the particular design was filed. The design must also not be identical to a design disclosed in an earlier registered design application. For a design to be distinctive it must not be substantially similar in overall impression to a design publicly used in Australia, or published in a document anywhere, before the application to register the particular design was filed. The design must also not be substantially similar in overall impression to a design disclosed in an earlier registered design application.

Applying for design registration

To obtain protection under the Designs Act for a design, you must apply to the Designs Office at the federal government agency, IP Australia, to register the design. This is in contrast to copyright, which arises automatically once an original idea is put in a material form, and which you do not need to register to obtain rights.

A design application must be in the form prescribed and accompanied by representations of the design (drawings or photographs). You can make one application to register multiple designs for one product or for multiple products if the design is a common design or if the products are in the same class.

If the application lodged complies with prescribed formalities, the design will be registered.

Your rights as a registered owner of a design

Once your design is registered, you will have title to that design and details of the registered owner or owners will be entered on the Register of Designs. The owner of a registered design has a monopoly over that design for a maximum period of 10 years.

Once your design is registered you have exclusive rights in respect of that design, including:

• to make a product that embodies the design
• to import, sell, hire or dispose of a product that embodies the design
• to authorise another person to do any of these things.

Once your design is registered you can assign (sell) or license (permit use of) the right to exploit the design.

Enforcing your rights as a registered owner of a design

A person infringes your registered design if, without your licence or authority, they make, sell, hire or import a product, or use for trade or business a product, embodying a design that is identical or substantially similar in overall impression to your registered design.

To enforce your design rights against someone who infringes your design, it is necessary for the Registrar of Designs to examine your design and find it valid. The process of initial registration is intended to be relatively inexpensive and straightforward and enables you to reserve multiple designs that you may not be sure will be commercially successful. There is no requirement for the Registrar to undertake substantive examination before registering a design. This means, for example, a fashion designer with several designs produced for a seasonal range could register a number of designs but only have the commercially successful designs examined, if needed, to take action against a person copying these.

On making an application to the Registrar of Designs for substantive examination, the Registrar will compare your design to designs that existed before you lodged your application. If your design is found to be new and distinctive, a certificate of examination will be issued. Another person, besides the owner of the design, may initiate the examination process. If a design is found invalid at examination, it will be removed from the Register.

Only once a certificate of examination is issued can you act against an infringer by asserting your rights and taking legal action. Therefore, as an owner of a registered design, it is best to arrange for examination of the design as early as possible, in particular if the design would seem to be commercially valuable and successful. Otherwise, you will not be able to commence infringement proceedings against a person you believe to be infringing the design upon becoming aware of the allegedly infringing behaviour. Instead, you will need to wait until the design has been examined and found valid.

A registered owner’s enforcement of their rights is helped if, when registering a design, a statement of newness and distinctiveness is also filed. The Court may then pay particular attention to those features identified by the registered owner, rather than having their impact diluted by an assessment of the substantial similarity of the overall article covered by the design registration.

Defence to design infringement

A defence to infringement, known as the “spare parts” or “right to repair” defence, may be raised as a complete defence against infringement when parts that are registered as designs are used (including manufacture and supply) for repair purposes. Repair is defined in the Act and broadly means to restore or replace a decayed or damaged component part of a product. To satisfy the defence the product needs to be repaired and have its overall appearance restored in whole or in part. The use of design registered parts for non-repair purposes is still an infringement of the registered design and it is for the owner of the registered design to prove that the person knew or ought to have known that the use or authorisation of use was not for the purpose of repair.

Losing copyright and designs protection

The designs and copyright regimes provide protection for different types of uses of artistic works. Accordingly, you must carefully consider which regime will best suit your needs on the basis of what you intend to do with your artistic work. You need to be aware of the importance of ensuring your design is new and distinctive if you wish to register your design.

An important concept in this area is “industrial application”. Industrial application generally occurs where a design is applied to more than 50 articles, or to one or more articles manufactured in lengths or pieces. Whether there has been industrial application of the design is a question of fact and depends on the circumstances. Therefore, where the design is applied to less than 50 articles it will depend on the circumstances as to whether the design has been industrially applied. The publication in Australia of a patent specification or design representations relating to an application to obtain patent or design rights for your product is also considered to be industrial application.

Unless dual protection is possible, the way in which you lose copyright protection when you industrially apply your work is as follows:

• where copyright subsists in an artistic work and the artistic work is embodied in a design; and
• the design is industrially applied; and
• the resulting products are sold or let for hire or exposed for sale or hire in Australia or anywhere,
• then on the products being first sold, let for hire or offered for sale or hire, you lose copyright protection in the artistic work.

For example, a chair moulded to exhibit particular visual features of shape, such as a pair of lips, would normally be protected by copyright for a period of 70 years after the death of the original designer. During that time, nobody can reproduce the chair without the permission of the copyright owner (or their estate).If more than 50 of these chairs are produced, with the copyright owner’s permission, the design may be considered industrially applied and the designer will lose copyright protection in relation to the chair once it is sold, let for hire or offered or exposed for sale or hire whether in Australia or elsewhere (unless it falls within the category of works exempted discussed below).

Copyright protection or design protection (and sometimes both) may be lost in a number of ways:

1. Unless dual protection is possible, once you register your design (and thereby obtain designs protection), you lose copyright protection.
2. If you decide not to apply to register your design and instead rely on copyright in your work, you may lose copyright protection where you industrially apply your design and sell or let for hire or offer for sale or hire those products that apply your design. You will also be prevented from registering your design.

1. Registering your design

Generally, when you apply to register your artistic work (eg. drawings for a cabinet or sketches for a coat) as a design you lose copyright protection in that artistic work. Therefore, with registration of your design you must rely on your rights under the Designs Act as a registered owner of a design.

As already mentioned, a design is only registrable if it is new and distinctive, and therefore to obtain designs protection you must register your design before industrial application and commercial dealing with products embodying the design, or use of the design publicly in Australia, or publication of the design in a document anywhere.

Note, if copyright subsists in an artistic work and an application is made by, or with the consent of, the owner of the copyright in the artistic work for registration of a design that corresponds with that artistic work, then previous use of that artistic work other than industrial application and commercial dealing with articles embodying the design, is not considered to destroy the novelty of a design. For example, you exhibit a painting in a gallery and then choose to weave this painting in a rug and register this as a design. If before registration as a design the rugs were not sold or let for hire of offered for sale or hire, then the fact that you had exhibited the painting in the gallery would not prevent your design from being regarded as new.

2. Relying on copyright protection

If you wish to exploit your design commercially, then it is dangerous to rely on copyright protection as you may lose copyright protection in your artistic work when you industrially apply your artistic work.

Losing copyright in this way can be a big problem. If you have already put together the three-dimensional version of your artistic work and started to manufacture and sell it, then it is unlikely to be considered new under the Designs Act and you won’t be able to register it. You are faced with the prospect of having no protection whatsoever against others copying your original work. Therefore, consider whether you need to register your work as a design before you start to industrially apply it. 

Dual protection

Some designs may be eligible for dual protection, that is protection under both the Copyright Act and the Designs Act. Dual protection is possible for designs of two-dimensional pattern or ornamentation that result in the reproduction of an artistic work when applied to the surface of an article. For example, a painting printed on a T-shirt or a motif repeated as a pattern for bed linen. It is, however, important to note that if your work has already been industrially applied and sold anywhere, then you may not be able to register it as a design as it would not be new and distinctive. You are then left to rely on copyright protection alone, if applicable.

Works of artistic craftsmanship

If a work of artistic craftsmanship is industrially applied, it retains copyright protection, unless it has been registered as a design. Unfortunately, the Copyright Act contains no definition of works of artistic craftsmanship and a precise definition of the term has not been settled by case law. It is clear, however, that the work must be of artistic quality and involve craftsmanship.

Artistic quality

It is possible for an artistic work such as a sculpture to also be considered as a work of artistic craftsmanship. To possess artistic or aesthetic quality, a work need not be one of fine art but must have more than mere visual appeal. It can also be functional such as a chair or a quilt.

Whether a work has sufficient aesthetic quality to be a ‘work of artistic craftsmanship’ is determined objectively and is a question of fact. Expert evidence can be used to show the existence of artistic quality. The subjective intention of the creator has also been held to play an important – though not essential – part in resolving this question. The courts cannot rely solely on their own personal aesthetic judgment.

Craftsmanship

The requirement of craftsmanship demands that the work reflects pride in sound workmanship and displays an exercise of skill by its creator in using materials to create the work and devices to transform the materials into the work. The concept of craftsmanship is not necessarily limited to handmade products. Products produced by machines qualify as works of craftsmanship when they result from the creator’s skill or involvement with the machinery, knowledge of the materials and pride in the workmanship. The more skill and involvement you show in the making of your work the better.

You have the choice about whether you want your work of artistic craftsmanship to be protected by copyright or design law. You can, however, only register your work as a design before you start selling articles that industrially apply that design. Once you register your work of artistic craftsmanship as a design you lose copyright protection. Therefore, you need to decide what kind of protection you want over your work early on.

Points to remember

There are two regimes by which you can seek to protect your design, namely:

• copyright regime
• design regime.

If you wish to protect a design you will need to decide on the regime that best suits your design. This decision will depend on what use you plan to make of the design.

• To register a design under the Designs Act, the design must be new and distinctive.
• To enforce your design rights against someone who infringes your design, the Registrar of Designs must examine your design and find it valid.

Copyright protection or design protection (or both) may be lost in a number of ways:

• Unless dual protection is possible, once you register your design (and thereby obtain designs protection), you lose copyright protection.
• If you decide not to apply to register your design and instead rely on copyright in your work, you may lose copyright protection where you industrially apply your design and sell or let for hire or offer for sale or hire those products that apply your design. You will also be prevented from registering your design.

Bear in mind that this is a tricky area of the law. This information sheet only gives you a general guide to the issues involved. We strongly recommend that you seek legal advice before you start to industrially apply your artwork to find out whether you should register your design.

More information

You can contact IP Australia on 1300 651 010 for further information on design registration, or visit their website at www.ipaustralia.gov.au