- Designs in brief
- Design Definition
- Registration of Designs
- Registration Process
- Exclusive Rights
- Spare Parts Defence
- The Design/Copyright Overlap
- IP in the Fashion Industry
A design right aims to protect the outward appearance or aesthetic appeal of a product. It covers shapes, ornamentation, configuration and pattern. Designs differ from patents in that they cover how a product looks, rather than how it works.
To qualify for registration, a design must have a commercial application or use, and must be new and distinctive compared to what has gone before. Once registered, the law gives the owner the sole right to commercially use, license or sell the design. Design registration lasts for 5 years, with the opportunity to renew registration up to 10 years.
For designers to get protection, a design must be registered before any manufacturing starts. One-off artistic designs for things like fashion, art, and furniture will often be automatically covered by copyright law and do not require design registration unless they are mass produced (50 or more items). Once a design is mass-produced or once the owner registers for design protection, copyright in the artist design is lost.
The law might change soon. The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 has passed the Senate and is currently before the House of Representatives. It will introduce a 12-month grace period, which means designers will no longer lose their ability to protect their products if they do not register before they commence production or publish their plans. The Bill also includes some other changes to the Designs Act
Video overview by Nicolas Suzor on Registered Designs.
Designs are protected under the Designs Act 2003 (Cth) (DA). A design protects the visual appearance of mass produced goods. To gain protection of a design, it must be registered.
A design is “the overall appearance of the product resulting from one or more visual features of the product”.1
A visual feature “includes the shape, configuration, pattern and ornamentation of the product”.2 A visual feature is not the feel of the product or the materials used.
Video overview by Amara Boustead on What a ‘Product’ is in Design Law
In order to obtain registration, a design must be “new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design”.3 Pursuant to s 16(1) of the Act, a design is new unless it is identical to a design that forms part of the prior art base for the design. Under DA s 16(2), a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.
In determining substantial similarity4 more weight must be given to the similarities than differences.
There must be regard to:
- the state of development of the prior art base;
- the features described in the application;
- the importance of a similar component in the context of the whole; and
- the freedom of the creator of the design to innovate.
The owner of a design is entitled to apply for its registration.5 A design application may be in respect of more than one design.6 Registration occurs without substantive examination - only the formal requirements are checked.7
Applicants must request either registration or publication.8
Publication is an alternative to registration. It does not give the design protection, but prevents subsequent registration of the same design by a third party. It may entitle the applicant to rely on copyright protection. The application will be checked to see if it satisfies the minimum requirements.9
Registration of an application will occur after an initial formalities check.9 Once registered, the details of the design will be published and the Registrar will issue a certificate of registration.10 If the Registrar is not satisfied with the application, the applicant will be given the opportunity to amend it.11
Examination now occurs post-grant, if a person requests or the court orders examination.12 Infringement proceedings cannot be launched until examination has occurred.13 If there is no ground for revocation, a certificate of examination is issued.14 However, if grounds of revocation are found, either the owner must be allowed to amend it if possible,15 or the registration will be revoked.16
A design is initially valid for 5 years, but can be renewed for a total of ten years if the renewal fee is paid.17
A design gives the owner exclusive rights to control the way that products embodying the design are used.18
These rights include:
Make or offer a product which embodies the design;
Import for sale or for trade or business;
Sell, hire, or otherwise dispose of;
Use in any way for trade or business;
To keep to sell, hire, or use; and
To authorise others to do any of the above.
A design will not be registrable or may be infringing if it is considered to “embod[y] a design that is identical to, or substantially similar in overall impression to, the registered design”. Same factors as for registrability.19
In Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 246 ALR 119, the court decided that the Lili dress was substantially similar to a Review dress.
Infringement proceedings can be brought once the design is examined and a certificate of examination is issued.13 The onus is on the registered owner to show infringement.20 Infringement occurs when, without licence or authority:21
- A person makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design;
- Imports such a product;
- Sells, hires or otherwise disposes of such a product;
- Uses such a product in any way for the purpose of any trade or business; or
- Keeps such a product for the purpose of doing any of these things.
The spare parts defence allows use of a product to repair a complex product. Does not cover use of the component part as original equipment or non-repair uses.22
In the case of infringement of a registered design, a court may award an injunction subject to such terms as the court thinks fit; or they may award damages or an account of profits.
A court may refuse to award damages, if at the time of the infringement, the defendant was not aware that the design was registered and had taken all reasonable steps to ascertain whether the design was registered.23
An important principle of design protection is that the courts and legislature attempt to prevent people from being simultaneously protected by both the design and copyright systems. Industrial applications of visual features are best suited to be protected by designs (as opposed to copyright).
Particular designs that might be protected by copyright may lose its copyright protection if the design has been applied industrially to mass produced products. This will be discussed in more detail below.
Not all copyright protections are lost in the copyright design overlap. The copyright design overlap does not apply to flat designs such as printing on T-shirts. It only applies in visual features of the 3D product.
Importantly, the copyright design overlap doesn’t apply to industrial works of artistic craftsmanship.
Video overview by Nicolas Suzor on The Overlap Between Copyright and Design.
Reproduction of an artistic work is an infringement.24
2D <-> 3D reproduction of an artistic work is an infringement.25 Artistic work includes paintings etc; buildings and models; and works of artistic craftsmanship. Reproduction of works of artistic craftsmanship is also an infringement (3D to 3D).
Application on a 3D object
Reproduction of an artistic work. If design is registered, also embodied on a product.
Reproduction of an artistic work to copy the plans. Reproduction of an artistic work to make the dress.
If the model is a work of artistic craftsmanship, the reproduction will be an infringement (covers 3D to 3D). Sometimes applies to the first production item of some garments.
Articles that can be registered as designs are not eligible for copyright protection. Shorter term of design protection is more appropriate for industrial designs.
Pursuant to the Copyright Act 1968 (Cth), where a design is or has been registered, it is not an infringement of an artistic work to reproduce the work by embodying that, or any other, corresponding design in a product.26
Pursuant to the Copyright Act 1968 (Cth) where a design has been applied industrially, it is not an infringement of an artistic work to reproduce the work by embodying that, or any other corresponding design in a product.27 ‘Applied industrially’ is a question of fact, although a design will definitely be industrially applied if there is more than 50 articles (Copyright Regulations 1969 (Cth) r 17). This is the presumption set out in the Copyright Regulations 1969 (Cth). Once this has occurred, the design is considered to be a mass produced industrial application and the right holder looses their ability to be protected by copyright protection. Creators who intend to mass-produce their designs should apply for design protection.
Note this does not apply to works of artistic craftsmanship, buildings or models of buildings.
Corresponding design “means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003”.28 Does not cover flat designs (artistic works printed on a product are still protected under copyright).
The first production run of a knitted fabric was a work of artistic craftsmanship. Produced by refining a mechanical process in line with aesthetic decisions. Could show reproduction of a substantial part of the fabric by showing that another fabric had “the essential ‘look’” of the original. Objective similarity not made out on the facts.
Sample pants were not works of artistic craftsmanship:
“The sample garments were not created as works of art. They came into existence for the purpose of determining how the design would look and to enable Ms Muscat to decide whether any changes should be made before production commenced. In any event, the sample garments are not works of craftsmanship and Ms Muscat never intended them to be”. (Finkelstein J, )
Copyright did subsist in the patterns. Right to prohibit manufacture lost under 1996 Act (and 2003). Pattern was indirectly copied when the defendant created their own patterns from the pants. Copyright infringement under 1996 Act. ‘Plan to plan’ copyright protection is now also lost under the 2003 Act.
It is not an infringement of copyright in an artistic work to reproduce if reproduction is derived from a 3D product that embodies a corresponding design; and reproduction is in the course of making, selling, or advertising a non-infringing product.29
Naval architect hand-built life size prototype (‘plug’) for fibreglass moulds. Held - not a work of artistic craftsmanship. Matters of visual and aesthetic appeal were secondary to function. Therefore s 77 removed copyright protection.
Intellectual property is a valuable tool used protect works in the fashion industry. Many aspects of intellectual property are involved in protecting fashion such as copyright, trade marks, patents and designs.
The following video discusses the way intellectual property operates in the fashion industry and outlines the copyright design overlap and how it effects fashion works.
Video overview by Emily Burns on IP in the Fashion Industry
DA s 5 ↩
DA s 7 ↩
DA s 15 ↩
DA s 19 ↩
DA s 13 ↩
DA s 21 ↩
DA ss 24, 39 and 40 ↩
DA s 35 ↩
DA s 45 ↩
DA s 41 ↩
DA s 63 ↩
DA s 67 ↩
DA s 66(3) ↩
DA s 68 ↩
DA ss 46 and 47 ↩
DA s 10 ↩
DA s 71(3) ↩
DA s 72(2) ↩
DA s 71 ↩
DA s 72 ↩
DA s 75(2) ↩
CA s 31 ↩
CA s 21 ↩
CA s 75 ↩
CA s 77 ↩
Copyright Act 1968 (Cth) s 74 ↩
CA s 77A ↩