While the line is blurred in practice, the law can be more hard-lined. For example, the Australian High Court case Firmagroup involved a registered design for a combination lock and handle for garage roller doors. The features protected were a rectangular plate with a recessed handle.

In deciding that a competing design did not infringe, the Court noted that only functional features had been copied. These features were not protected because, although intended to make the article more useful, they were not sufficient to convey an idea of shape or configuration. The Court added that a registered design should not provide a monopoly in a method or principle of construction.

This decision may appear harsh at first glance, but it clearly demarcates the limits of protection from a registered design. The functional features would have been more adequately protected by a patent. It was the owner’s misfortune to have relied on the wrong form of protection.

Therefore, while functional articles (products) are capable of being protected as registered designs, the functional idea conveyed by a product is not. Patent protection is required to protect the fundamental form – that is, the essential component or components needed to deliver the desired function.

A registered design is nevertheless a useful form of protection for products with innovative (ie new and distinctive) visual features because:

(a) a design registration (under the Australian Designs Act 2003) is infringed if a competing design is substantially similar in overall impression. There is no need to prove copying or rely on an established reputation in a design; and

(b) copyright protection is lost in works relating to the design of commercially produced products.

In industries where visual appearance or features drive consumption, design registrations can be particularly important for retaining competitive advantage and market share. Examples include the fashion, furniture and kitchenware industries and other industries where sales can be driven by popular trends or fads.

Let’s turn now to the Apple iPad as an example of a product protected by both patents and registered designs. How does this work?

Patents protect various functional features of the device – things the iPad can do or the way it works. For example, separate patents protect its proximity detection capabilities, and colour management and multimedia conference systems, to name but a few.

There are also registered designs protecting various visual features, such as the actual shape of the device and the ‘home’ button feature.

So, if you are thinking about how a product might be adequately protected, tease apart which aspects of the product need protection (and are commercially valuable).

A patent can stop look-alike products lacking the same capabilities from differentiating themselves in the market as true competition. A registered design can prevent products that deliver similar capabilities but lack the same visual or other design features (eg shape, ease of use) from enjoying the same level of consumer demand.

To borrow from a well-known brand, if thinking – should it be a patent or registered design? Think: different. 

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