Design disputes in Australia

For many businesses, innovation is reflected not only in how a product functions, but in how it looks. A distinctive design can be a significant competitive advantage, helping consumers recognise products and differentiate them from competing offerings.

Businesses often invest substantial time and resources developing products that are visually distinctive, commercially attractive and marketable. When competitors imitate those designs, the consequences can include lost sales, diminished brand recognition and erosion of market share.

The Designs Act 2003 (Cth) provides protection for eligible product designs through Australia’s registered design system. A registered design can give businesses the right to prevent others from using designs that create the same or a substantially similar overall visual impression.

Whether you are seeking to enforce a registered design, respond to allegations of infringement, or protect a new product design, Coulter Legal provides practical, commercially focused advice tailored to your objectives.

What is a Registered Design?

A registered design protects the overall visual appearance of a product.

Unlike a patent, which typically protects how an invention works, a registered design protects how a product looks.

Protection may extend to features including:

• Shape;
• Configuration;
• Pattern;
• Ornamentation; and
• The overall visual appearance of the product.

Products commonly protected by registered designs include:

• Furniture;
• Consumer electronics;
• Lighting;
• Packaging;
• Kitchenware;
• Medical devices;
• Tools;
• Toys;
• Jewellery;
• Sporting equipment;
• Homewares;
• Automotive components; and
• Industrial products.

For many businesses, product appearance is a key driver of consumer purchasing decisions. Protecting that visual appearance can therefore be as important as protecting a brand or technological innovation.

Registered Designs Compared with Patents and Copyright

Businesses often ask which form of intellectual property protection they need.

While patents, copyright and registered designs can all protect aspects of innovation, each right serves a different purpose.

Registered designs

Registered designs protect the visual appearance of a product.

Patents

Patents protect new inventions and functional innovations, including how products operate or achieve a technical result.

Copyright

Copyright protects certain original artistic, literary and creative works.

While design drawings may initially attract copyright protection, that protection can become limited once the design is industrially applied. The interaction between the Copyright Act 1968 (Cth) and the Designs Act 2003 (Cth) can be complex, making early legal advice important when commercialising new product.

Many products benefit from multiple forms of intellectual property protection. For example, a business may simultaneously own:

• A patent protecting the product’s functionality;
• A registered design protecting its appearance; and
• Registered trade marks protecting the shape of a product and the branding used to market it.

A coordinated intellectual property strategy can maximise the value of these complementary rights.

Why Register a Design?

Registration can provide significant commercial advantages.

A registered design may:

• Deter competitors from copying your products;
• Increase the value of your intellectual property portfolio;
• Strengthen your negotiating position;
• Support licensing opportunities;
• Improve investor confidence;
• Enhance business value during acquisitions or investment; and
• Provide enforceable legal rights against infringers.

Businesses that delay registration may lose the opportunity to protect their designs, particularly where products have already been publicly disclosed.

Obtaining advice before launching a new product can therefore be critical.

Registration and Certification

An important feature of Australian design law is that registration alone is generally insufficient to enforce a design through infringement proceedings.

Before infringement proceedings can be commenced, a registered design must be examined and certified by IP Australia.

During examination, IP Australia assesses whether the design satisfies the statutory requirements for protection, including whether it is new and distinctive when compared with the prior art base.

Once certified, the design owner can then enforce its rights through the courts.

Because certification can affect enforcement options and timing, businesses should seek advice promptly if they suspect infringement.

What Makes a Design Registrable?

Not every product design qualifies for registration.

To be registrable, a design must generally be:

• New, meaning it has not previously been publicly disclosed in a way that destroys novelty; and
• Distinctive, meaning it creates an overall impression that is sufficiently different from earlier designs forming part of the prior art base.

Whether these requirements are satisfied depends on the design itself, the relevant prior art, and the provisions of the Designs Act 2003 (Cth).

Businesses should carefully manage confidentiality before publicly launching a product, as premature disclosure may affect registrability.

What Is Design Infringement?

Design infringement generally arises where another person, without the owner’s permission, deals with a product embodying a design that is identical to, or substantially similar in overall impression to, a certified registered design.

Whether infringement has occurred depends on the specific facts of each case.

Rather than focusing on isolated similarities, courts examine the overall visual impression created by the competing products.

This is often a detailed assessment requiring careful comparison of the products as a whole.

The “Overall Impression” Test

A central feature of Australian design law is the focus on overall visual impression.

Courts do not simply count similarities and differences between products. Instead, they assess whether the allegedly infringing product creates a substantially similar overall impression when viewed as a whole.

Relevant considerations may include:

• The shape of the product;
• Its configuration;
• Surface features;
• Ornamentation;
• Patterns;
• Visual proportions;
• Distinctive design elements.

Some differences may be obvious when products are compared side by side but have little effect on overall visual impression. Conversely, similarities in distinctive features may carry significant weight.

Common Design Disputes

Registered design disputes arise across a wide range of industries.  These include:

• Furniture and homewares;
• Consumer products;
• Building products;
• Packaging and containers;
• Medical technology;
• Electrical products;
• Lighting;
• Automotive components;
• Agricultural equipment;
• Recreational products.

Common examples of disputes include:

• Competitors releasing visually similar products;
• Imitation packaging;
• Copycat furniture;
• Lighting products;
• Kitchen appliances;
• Consumer electronics;
• Medical devices;
• Automotive accessories;
• Industrial equipment;
• Sporting goods;
• Homewares;
• Fashion accessories.

Many disputes arise after a commercially successful product enters the market, and competitors seek to capitalise on its popularity by releasing visually similar alternatives.

As manufacturing technologies continue to evolve – including 3D printing and rapid prototyping – the risk of design copying has increased, making early protection more valuable than ever.

Why Early Legal Advice Matters

Businesses often delay seeking advice until copied products have become well established in the marketplace.

Early legal advice can help you:

• Preserve evidence of infringement;
• Assess the strength of your registered design;
• Consider certification requirements;
• Evaluate commercial enforcement options;
• Minimise financial loss;
• Explore negotiated outcomes before litigation becomes necessary.

Early advice can also assist businesses in developing a broader intellectual property strategy that complements registered design protection with trade marks, copyright and, where appropriate, patents.

How can we help?

If you believe your design rights have been infringed or you have received allegations of infringement, or you are interested in protecting your design, Contact Coulter Legal to arrange a confidential and complimentary 15-minute consultation with one of our IP specialists.