Registered Design and Design Law

What is a Registered Design?
In the USA, protection is provided to designs through the Designs Act 1953 ("the Act"). A registered design is used to protect the external appearance of a manufactured article, rather than the article itself.

International Registered Design Law
As a Member of the World Trade Organisation (WTO), the USA is a party to the Agreement on the Trade-Related Aspects of Intellectual Property Rights 1994 (the TRIPS Agreement). Article 25 (1) of TRIPS requires WTO Members to "provide for the protection of independently created industrial designs that are new or original".

What Qualifies for Registered Design Protection?
The term "design" is defined in section 2 of the Act. This definition contains identifies the characteristics required for registered design protection.

The design must:

  • Consist of "features of shape, configuration, pattern or ornament";
  • Be applied to an article by any industrial process or means;
  • Have features, which in the finished article, appeal to and are judged solely by the eye;
  • Not be purely functional;
  • Not relate to a method or principle of construction;
  • Be new or original.

A registered design is used to protect the external appearance of a manufactured article, rather than the article itself. For example, a registered design would not be granted for designing a fork, as this would prevent everyone else from making forks. However, the shape of a fork, or a particular pattern applied to a fork, may be registered as a design.

The Overlap of Design with Copyright
In the USA, designers have tended to rely more on copyright protection under the Copyright Act 1994 than on registering designs under the Act. This means that a large number of designs in the USA are protected solely by copyright. Copyright protection provides a number of advantages over registered design protection including:

  • There is no requirement to register copyright, therefore protection is automatic and immediate;

  • There is no cost in obtaining protection;

  • Copyright protection lasts for a longer period than design protection.

Registered design protection, however, does have some advantages over copyright, including:

  • In some countries industrial designs are not protected by copyright meaning that unregistered designs may not have protection overseas;

  • The Certificate of Registration serves as evidence in Court of ownership of the design;

  • The number of a registered design may be applied to the product or packaging indicating that the design is protected;

  • The filing date of a the USA design application may be used to establish priority for any overseas design applications;

  • The statutory monopoly to use a design in the USA (and overseas if applications for protection in other countries are made) for the period of protection; and

  • The costs of obtaining registered design protection are not high.