What is your brand design and style worth to your business?
Most manufactured objects start with an industrial design creating and developing the look of a product for manufacture and sale, including the shape, pattern, configuration and ornamentation applied to the article to form the commercial product.
Intellectual property rights are designed to facilitate and encourage creativity, innovation and investment in commercialisation by enabling exclusive use rights.
However, intellectual property rights apply to products differently at different times. For example, while copyright law can protect a design in the planning phases, once it is intended to be sold to the public, design registration should then be used to protect the unique look and form of an industrial design.
In addition, once commercialisation starts, the name and branding style of the product may be able to be protected through trade mark registrations.
It is not always easy to establish which form of intellectual property protections apply or are needed at each stage of the design and commercialisation of an industrial product, or how best to structure and move forward with commercialising your ideas.
However, with an industrial design market worth $363 million and 400+ industrial design businesses in Australia, protecting your designs is imperative to solidify the commercial value your intellectual property delivers to your business, now and in the future.
How can you protect your designs?
Industrial designers have a number of options to choose from when considering the best protection for their creative work. Each form of IP protection applies to different outputs, has different features and suits particular circumstances.
In this three-part series we explore the four primary forms of IP protection:
- Design & Trade Marks;
- Copyright & Patents;
- Plus we also take a look at the factors you need to consider when commercialising an idea.
In the initial part of our series How to Protect and Commercialise Industrial Design we discuss Designs and Trade Marks.
Design registration protects the overall appearance of a product. In Australia design registration can protect the design features of both aesthetic and functional articles.
What can be registered as a design?
- Product designs
- Products with a unique appearance
- Plastic or metal extrusions in the building industry
- Uniquely shaped key electrical components
- Products with unique artistic works, such as patterns or ornamentations
- Specific industry protections such as Plant Breeder Rights (for unique plant breeds) and the Geographical Indication Act (for wine protection)
What are the benefits of design registration?
- The exclusive right to use the design specified in your registration
- The ability to license the use of the registered design
- The design can appreciate over time and be sold for a profit
- Prevents other parties/competitors copying your design
A design must be new and distinctive to be registrable. It must not be publicly used in Australia or published in a document within or outside of Australia before the priority date of the design application, or be substantially similar in overall impression to a design that has been.
If you inadvertently or purposely disclose your design before a design application has been filed with IP Australia, it will no longer be considered new and distinctive. Therefore it is imperative that a design application is filed before any publication or release into the public domain.
Did you know? There are 7500 design applications filed each year in Australia.
A trade mark is your badge, your customers’ visual cue that you are you, and not a cheap imitation. A good trade mark should ideally have a recognisable association with your brand, be distinctive of the goods and services you offer and be used in the course of trade.
‘A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’
(Ref: s17 Trade Marks Act 1995)
What can be registered as a Trade Mark?
- A phrase, sound, scent, shape, picture
- An aspect of packaging
- Any combination of the above
What are the benefits of a trade mark?
- Exclusive use of the trade mark for the registered goods and services
- A defence against trade mark infringement by others
- Protects you against newcomers or competitors who may encroach on your market or position themselves as associated businesses
- It is a highly valuable asset that can be licensed, franchised or sold
- Can be used as security for business loans and funding
- Increases brand awareness
- Adds value to your business if you have strong IP rights
Registering a trade mark takes time. When an application for the registration of a trade mark is lodged, the law allows a period of 7.5 months for the process, including a period of two months during which a trade mark is advertised publicly. This is done in order to allow interested parties to file objections to the registration of a trade mark. This is called the ‘opposition period’.
Given registered trade marks priority rights start from the date of filing and the amount of time it takes to secure a trade mark, it is vital to start the process as soon as it is feasible in order to secure your competitive advantage as soon as possible.
Did you know? There were 88,725 trade mark applications filed during 2021 in Australia.
In the upcoming piece of our series How to Protect and Commercialise Industrial Design, we will discuss the next two primary forms of IP protection: Copyright and Patents.
If you would like any further information on how to protect your IP, please contact the team at Antcliffe Scott.