- What a registered design is and the problem it solves
- The parties and what each one does
- What a registered design actually protects
- The test at the centre of the scheme: new and distinctive
- The 12-month grace period
- From application to registration
- Certification: the step that makes a design enforceable
- What infringement looks like and what the owner can do
- Who owns the design
- Where a lawyer fits in
- The gap between registration and certification decides most outcomes
What a registered design is and the problem it solves
Australian founders often search for "design patent" because that is the term used in the United States. In the US, a design patent protects the ornamental design of an article of manufacture, and patents issued from applications filed on or after 13 May 2015 run for 15 years from grant. In Australia the comparable protection is a registered design under the Designs Act 2003 (Cth) (the Act), administered by IP Australia. The two ideas do similar work: they protect how a product looks, not how it works.
The problem a registered design solves is copycatting. When a product sells well, competitors can imitate its appearance cheaply and quickly, because reproducing a shape or surface pattern costs far less than developing the product in the first place. A registered design gives the owner exclusive rights to use the design and to stop others from making or selling products whose overall appearance is substantially similar. This article walks through the scheme as it actually operates: what a design right covers, the newness test at its centre, the two-stage registration and certification process, who owns the design, and where enforcement bites.
The parties and what each one does
A handful of players drive the scheme:
- IP Australia: the government agency, acting through the Registrar of Designs, that receives applications, registers designs, conducts examination and issues certificates of examination.
- The applicant and registered owner: the person or business that files the application and holds the exclusive rights once registered.
- Examiners: officers within IP Australia who assess whether a design was new and distinctive when it is examined.
- Competitors and copycats: the reason the scheme exists, and the parties the registered owner can sue.
- The courts: the Federal Court, the Federal Circuit and Family Court of Australia (Division 2) and State Supreme Courts, which hear infringement and revocation proceedings.
The interests of these parties pull in different directions. The owner wants enforceable rights. Competitors want freedom to design around the register. IP Australia's job is to administer the register correctly rather than to champion either side. The tension that matters most for a startup sits inside the process itself: registration is cheap and largely unexamined, which is exactly why a separate certification step exists before a design can be enforced.
What a registered design actually protects
The Designs Act 2003 (Cth) defines a design as "the overall appearance of the product resulting from one or more visual features of the product". Appearance is the whole point. The visual features that count include the shape, configuration, pattern and ornamentation of the product, and a visual feature may serve a functional purpose and still qualify. What does not count are the feel of the product, the materials used, and, for products with indefinite dimensions, the indefinite dimension itself.
The design must belong to a product, which the Act defines as a thing that is manufactured or hand made. A component part of a complex product can be protected if it is made separately from the product, and a kit that assembles into a product is treated as that product. IP Australia's practical framing is that a design right protects the visual appearance of a whole product that has physical and tangible form, is manufactured or hand made, and is produced on a commercial scale.
What a registered design does not cover matters just as much. How a product works is the territory of a standard patent. A logo, brand name or slogan is a trade mark question. Original artwork and software fall under copyright. For a product business, these protections usually work as a stack: a registered design for the product's look, a trade mark for the name customers recognise, and contracts for everything the registration cannot reach.
The test at the centre of the scheme: new and distinctive
To be registrable, a design must be new and distinctive when compared with the prior art base for the design as it existed before its priority date. The priority date is the filing date of the application in the ordinary case, so the clock is set by when the design is filed, not when it is examined.
The prior art base is broader than many founders expect. It consists of designs publicly used in Australia and designs published in a document anywhere in the world. An Instagram post, a crowdfunding campaign or a website listing by anyone, anywhere, can form part of the prior art base if it came before the priority date.
The Act then gives the two limbs precise meanings. A design is new unless it is identical to a design that forms part of the prior art base. It is distinctive unless it is substantially similar in overall impression to a design in the prior art base. The second limb is the one that usually decides disputes, and the Act directs how it is assessed: more weight is given to similarities than to differences; the state of development of the prior art is taken into account; and the freedom of the creator to innovate is considered.
This is where the statement of newness and distinctiveness comes in. If the application identifies particular visual features as new and distinctive, the examiner and any court must have particular regard to those features. Deciding what to claim in that statement, and making sure the representations actually show it, is a drafting exercise that shapes both examination and enforcement.
The 12-month grace period
Startups routinely publish before they file, and the Act makes some room for that. Publications or uses of the design by the registered owner, a predecessor in title or the designer, and disclosures by anyone who derived the design from them, are disregarded if they occurred in the 12 months ending the day before the priority date. The grace period is set out in s 17 of the Act, which was amended by the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) to broaden the disclosures that can be disregarded.
The grace period is not a licence to publish first and file later. It is fact-specific, it protects only the applicant's own disclosures and disclosures derived from them, and it does nothing for a design that someone else independently put into the prior art base. The safe course remains to file before publishing, and to treat the grace period as a fallback to be assessed with advice rather than a deliberate strategy.
From application to registration
Filing is the first step. An application is made to IP Australia and must include representations of the design, meaning drawings, tracings, photographs or specimens of the product. The application must specify the person or persons entitled to be registered as the owner.
The request for registration can be included in the application or made within the prescribed period. The critical feature of the Australian scheme is that registration happens without substantive examination. IP Australia checks that the formal requirements are met, registers the design, and makes the application and representations open to public inspection. IP Australia's guidance is that registration takes around two months and that the cost starts at $200.
Publication is a double-edged sword. Once registered, the design is on the public record, and competitors can search the register for clearance. Registration also starts the term running: a registered design lasts 5 years from the filing date, renewable for a further 5 years, for a maximum of 10 years.
Certification: the step that makes a design enforceable
The most important mechanic in the scheme is that registration alone gives no right to sue. Infringement proceedings may not be brought until the design has been examined and a certificate of examination has been issued. In plain terms, a registered design that has not been certified is unenforceable.
Examination can be requested by any person, not only the owner, and IP Australia may also examine a design on its own initiative. The Registrar examines the design against the grounds for revocation, in practice whether the design was new and distinctive at its priority date and whether the right person is recorded as owner. If satisfied that no ground for revocation is made out, the Registrar issues a certificate of examination. IP Australia's guidance puts certification at around four months and from $500.
The trap for startups is treating registration as the finish line. A design can sit on the register, published and unenforceable, indefinitely. A competitor who wants to copy can lawfully do so until a certificate exists, because the owner cannot sue. There is also a sharper version of the same risk: because any person can request examination, a competitor who believes the design is invalid can force the question, and a failed examination can expose the registration to revocation. Certification is therefore both a sword and a shield, and it should be planned, budgeted and timed rather than deferred until the first copycat appears.
What infringement looks like and what the owner can do
Infringement is defined against the same standard of overall impression. A person infringes a registered design if, during the term of registration and without licence, they make or offer to make a product embodying a design identical to, or substantially similar in overall impression to, the registered design; import such a product into Australia for sale or trade use; sell, hire or otherwise dispose of it; use it for trade or business; or keep it for any of those purposes.
The remedies follow the usual IP pattern. A court may grant an injunction and, at the plaintiff's option, damages or an account of profits. One nuance matters for startups that enforce against early copycats: for infringement occurring before the date of registration, a court may refuse or reduce damages if the defendant did not know, and could not reasonably have been expected to know, that an application had been filed. Evidence of when the design was created and how it evolved can therefore be worth as much as the registration itself.
Two exemptions soften the edges. Repairing a complex product with a component part that embodies the registered design does not infringe, which keeps the scheme out of the spare parts market. And a person who was already making or selling the product before the priority date can continue doing so. Neither exemption removes the value of the right; they just mark its boundaries.
Who owns the design
The default ownership rule is deceptively simple: the designer is entitled to be registered as the owner. The exception is where most startup disputes live. If the designer created the design in the course of employment, or under a contract, with another person, that other person is the owner unless they agreed otherwise.
That exception catches founders who assume they own the output of contractors, agencies and manufacturers. If a designer was engaged under a contract to create the design, the contracting business owns it unless the contract says otherwise, but where the designer worked without a clear written engagement the designer keeps the rights, and a manufacturer who contributes to the design of the product can end up with rights in it. Written agreements that assign intellectual property to the business, covering designers, engineers and manufacturing partners, are the fix. Co-founders raise the same question in a different form: who can approve a filing, who owns the design if someone leaves, and what happens to improvements, are issues best settled in a shareholders agreement before the filing.
Where a lawyer fits in
The value of legal input is concentrated at the front of the process, before the first disclosure or filing. A practitioner can assess whether a design is likely to be new and distinctive against the prior art base, advise on the scope of the representations, and draft the statement of newness and distinctiveness so it claims the features that matter commercially. Around the filing, a lawyer can sequence the paperwork: ownership assignments signed before the application, confidentiality protections in place before design files go to a manufacturer, and the application filed before any public launch.
Later steps are just as amenable to assistance. Certification can be prepared and budgeted as part of the filing plan, objections raised during examination can be answered, and if a copycat appears, a lawyer can analyse whether the competing product is substantially similar in overall impression, send a demand letter, or run proceedings in the Federal Court.
The gap between registration and certification decides most outcomes
The mistake that costs startups most in this area is treating registration as the finish line. A registration is real property on paper, but the right to sue only arrives with the certificate of examination, and the newness and distinctiveness of the design were only ever as good as the prior art base at the priority date. The design should be filed before it is published, the ownership chain should be documented before the application, and certification should be a planned step rather than a reaction to a copycat. None of this is out of reach for a small business: registration starts at around $200, and a consultation early in the process can map the whole sequence before money is spent on tooling and launch.
If you are at the point of finalising a product's look and have not yet filed, the question worth answering now is what the prior art base already contains, and whether the design has been disclosed in any form before today's date. Those two facts determine whether registration is still available, and they are exactly what a lawyer would check first.