We have found that in the rush to market their wares, many of our design clients often neglect to put at the fore front of their minds the importance of registering the overall appearance of their product (also known as the design) under the Designs Act 2003 (Cth).
You may be thinking: I don’t want to spend money on legal costs before finding out whether the product will sell. After all, that’s what the “lean methodology” (the new mantra for entrepreneurs and start ups) teaches. Your business plan usually involves getting the product to market as quickly as possible, test it with consumers, fix the bugs and then move on to the next iteration. That can work well for figuring out your market, for identifying your consumers and for pricing your product. However, for products and designs there is a big drawback in releasing and selling your product prior to registration of the design under the Act.
In short, if you don’t register your design, then you may not be able to prevent somebody flagrantly copying your design.
This is because in Australia (unlike the UK, the European Union and the United States) there is no protection for unregistered designs.
In addition, selling your product in Australia may also deprive you of the subsequent ability to establish an effective registration of your design (as does having your design published anywhere in the world).
If you have a design that you’re considering releasing to the market, we recommend taking advice on the ways in which your intellectual property in the product can be protected. Doing this at the start on a product you are confident will succeed will save you a lot of time, legal costs and grief later on.
The Advisory Council on Intellectual Property is releasing its report and recommendations into the operation and effectiveness of the Designs Act 2003 (Cth) this month (http://www.acip.gov.au/reviews/all-reviews/review-designs-system/). We will report further on this in due course.
If you would like to talk to a lawyer about your product and registering it as a design, or if you would like some general advice on intellectual property, please contact Peter North (Senior Associate, Commercial Law) and Chris Morey (Principal, Business Law) on (03) 9629 9629.