There has been increasing awareness of the so called “replica furniture” market and the damage that this industry is doing to local designers. However,
less concern has been raised about the possible commercial ramifications of failing to register a design within sufficient time.
While, in Australia, a design may initially be protected under copyright law, it loses this protection when it is used for an industrial or commercial
purpose. The gap between copyright protection and design registration is often the greatest trap for emerging designers.
New and distinctive: a trap for the unprepared
In order to be registered a design must be new and distinctive. The new and distinctive requirement can be a significant burden on newer designers.
A designer can fail to gain a registration because they have published or exhibited their design prior to seeking registration. Such a design will no longer
be considered new or distinctive as it is similar to something that is already in the public sphere (even though this product is something produced
by the very same designer). This leaves the way open for others to create replicas of the design without the designers consent.
Once a design has been used for an industrial or commercial purpose there is no inherent copyright protection available for that design. This makes it
crucial to register new designs because without registration the designer has no legal recourse against someone who copies their design. Registration
provides teeth to a claim of design infringement.
Room for Improvement: bridging the divide between copyright protection and design registration
Unlike Australia, in the EU there is a grace period of one year from the initial disclosure of the design (through publicity or exhibition) in which the
design is protected and can be registered. This period allows for market testing and development by the designer.
The adoption of such a grace period into the Australian framework would protect developing and emerging Australian designers who are unaware of the ramifications
of failing to register a design prior to revealing it to the public, bridging the gap between copyright and design registration protection.
Ultimately, in the Australian framework, forewarned is forearmed. The best practice is to register any design prior to entering the product in any
exhibitions or competitions (this does not need to include examination at the outset). This will provide legal protection of the design if it is
used commercially. Timely registration remains the greatest protection against the replica industry.
For further information contact the Aitken Partners dedicated AFA Member ‘legal help desk’ on 1300 AFA LAW (1300 232 529)