9 Overlaps with other Intellectual Property Rights

The Australian intellectual property system offers various ways to protect different forms of innovation and creativity.^[1] While each type of intellectual property protection was designed for specific purposes, the current landscape of product development and innovation shows that these rights frequently overlap.^[2] Overlaps are especially omnipresent in the case of designs, where a product’s outward appearance may be protected under several different intellectual property regimes. For example, take the humble dishwashing tablet.^[3] How a dishwashing tablet works have been protected under a patent, and the product’s shape has been protected with registered designs and trade marks. The original drawings for the dishwashing tablet would have also attached protection under copyright as an artistic work.

As discussed in Chapter 1, multiple intellectual property rights can subsist in one product. This chapter examines specifically how design rights under the Designs Act 2003 (Cth) overlap with other forms of intellectual property protection in Australia. Our focus will centre on three primary areas of overlap: the intersection between designs and the Copyright Act 1968 (Cth), the Trade Marks Act 1995 (Cth), and the Patents Act 1990 (Cth).^[4]

Understanding these overlaps is crucial for several reasons. First, designers and businesses must decide which forms of protection best suit their needs. Second, enforcing intellectual property rights often requires navigating these overlapping protections. Third, for lawyers and attorneys, effective intellectual property portfolio management demands a thorough understanding of how these rights interact. Finally, appreciating these overlaps provides valuable insight into the policy considerations underpinning Australia’s intellectual property system.

Watch

Watch this video in which Ryan Tilley and Huy Nguyen describe their innovation, ‘Geck Traxx’. It is a portable wheelchair accessory that enables manual wheelchair users to have off-road access. The accessory users to access the beach for example.^[5] Importantly, Ryan also explains how they navigated the registered design and patent systems to protect their idea.^[6]

Reflect

The Gecko Traxx example demonstrates how intellectual property overlaps can emerge for a single product and how an inventor or designer must navigate legislative provisions that may or may not regulate these overlaps, leading to protection or loss of protection. What proved fatal to dual protection in the Gecko Traxx example?

Introduction

The Australian intellectual property framework includes several distinct forms of protection. Copyright arises automatically upon the creation of original works and is governed by the Copyright Act 1968 (Cth). Trade mark registration, available under the Trade Marks Act 1995 (Cth), allows traders to protect signs that distinguish their goods or services. The grant of a patent, provided under the Patents Act 1990 (Cth), protects new and innovative technical solutions. These protection forms may intersect with design rights in several ways.

Design protection focuses on the visual appearance of manufactured products. However, the same product might also embody patentable technical innovations, bear trade marks indicating its commercial origin, and incorporate artistic works protected by copyright. These overlapping protections create opportunities and challenges for rights holders. The evolution of the Australian intellectual property system has led to specific provisions managing these intersections. The copyright/design overlap provisions in the Copyright Act 1968(Cth) attempt to delineate clear boundaries between these two forms of protection.^[7] However, applying these provisions can be complex and require careful consideration.

Throughout this chapter, we will examine each overlap, explore the intersections, and consider the practical implications for those seeking to protect their intellectual property rights. This will be done from the perspectives of designers, businesses, and legal practitioners aiming to protect new products. Additionally, it will consider how different forms of protection can be combined effectively.

Copyright and Designs Overlap

The intersection of copyright and design rights is one of the most complex and contentious areas of Australian intellectual property law.^[8] This complexity arises from fundamental differences between these two forms of protection, which may apply to the same subject matter. Copyright protection arises automatically when original works are created and can exist in artistic works that may also be registered as designs. This potential for dual protection has led to specific legislative provisions to manage this overlap.

Under the Copyright Act 1968 (Cth), copyright protection is available for artistic works, including drawings, sculptures, and artistic craftsmanship. When these artistic works are used as the basis for manufacturing products, questions arise about whether protection should be available under copyright law, designs law, or both.

In this example, the copyright owner has rights to the commercial product and the original drawings. More specifically, the owner enjoys the rights to the two-dimensional artistic work and the right to reproduce it in three-dimensional form.^[9] As discussed in Chapter 5, if the owner decides to register the visual appearance of the chair as a design, prior use of the drawings does not prevent the registration for lack of novelty under section 18(2) of the Designs Act. In order to prevent dual protection under both regimes, sections 74–77 of the Copyright Act regulates the overlap by limiting copyright protection of artistic works that are applied industrially.

The provisions establish a policy restricting copyright protection for artistic works that serve as designs for the shapes of mass-produced items. The primary purpose of the copyright/designs overlap provisions is to channel protection for mass-produced items into the designs system rather than allowing protection through copyright law. This policy objective reflects the view that design protection, with its limited duration, is more appropriate for mass-produced items than the longer-term protection offered by copyright. This is mainly due to ‘the low innovation threshold required to qualify for copyright protection, the lengthy duration of such protection and the absence of any public register to record such protection’.^[10]

The Legislative Framework

The legislative framework has been described as ‘contentious and unsatisfactory.’^[11] Section 74 of the Copyright Act introduces the concept of a ‘corresponding design’ in relation to an artistic work. This concept, which focuses on the three-dimensional aspects of a design, is fundamental to understanding how the overlap provisions operate.

This situation may arise when a two-dimensional drawing serves as the basis for manufacturing a three-dimensional product or when a three-dimensional artistic work is reproduced in product form. The concept of corresponding design allows for the protection of artistic works that are used as two-dimensional designs. So-called ‘flat’ or ‘surface’ designs,^[12] can enjoy copyright protection while being registered as a design.

Meanwhile, designs that are woven into, impressed with, or worked into the product would lose copyright protection.^[13] For example, artistic works turned into tapestries, kitten items or carpets.

The Operation of the Overlap Provisions

The overlap provisions operate through a series of complex rules that determine when copyright protection is lost in favour of design protection. Section 75 states that when a corresponding design is registered under the Designs Act, copyright protection is lost for any reproductions of the artistic work made by applying that design to products. This provision effectively channels protection into the designs system once design registration is sought.

Although this provision funnels protection to the registered design system, copyright protection would still apply to uses of the artistic work outside of the design monopoly — for example, two-dimensional uses of the artistic work as flat or surface designs.

Section 77 limits copyright protection for an artistic work that is industrially applied as a three-dimensional design with the consent of the copyright owner but is not registered or is not registrable as a design under the Designs Act. In these circumstances, copyright protection is generally lost for reproducing the artistic work by applying the design to products. However, this section includes important exceptions for certain categories of works, including buildings, models of buildings, and works of artistic craftsmanship.

Read

Subsection 77(1A) was added by the Designs (Consequential Amendments) Act 2003 (Cth), and provided that products illustrated in a patent specification or design application will be regarded as ‘industrially applied’ and lose copyright protection.

A significant phrase in this provision is ‘applied industrially.’ What is considered to be applied industrially is outlined in Regulation 12 of the Copyright Regulations 2017 (Cth) as follows.

Although Regulation 12 considers the production of 50 or more articles, the provision is not exhaustive. Gummow J in Press-Form Pty Ltd v Henderson’s Ltd,^[14] considered the then-equivalent Regulation 17 and whether the deeming clause is inclusive or exhaustive. The case involved a design for a “Vehicle Chair Moulding” that was registered under the previous Designs Act 1906 (Cth).^[15] The respondents caused 41 seats to be manufactured and installed in a prototype bus according to the design. It was held that it was not an exhaustive deeming provision and could be decided on the facts of the case. When considering whether it was industrially applied, Gummow J said: ^[16]

‘There may be designs applicable to articles of such a substantial or complex nature that whilst it is unlikely that more than 50 articles will ever be made by the owner of the design registration, in ordinary parlance the design will have been applied industrially by manufacture of something less than 50 articles. If the design is subsequently registered by the industrialist and the legislation and reg. 17 has the meaning contended for by the respondents, the design will not have been applied industrially before registration. This means that the design will not be treated as invalid by reason of the previous exploitation, albeit that exploitation maximised the use to which the owner of the design wished to put it.’.

Read Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd,^[17] where the Full Federal Court considered whether Polo/Lauren could use copyright law to prevent the parallel importation of genuine clothing bearing their polo player logo. The case provides important guidance on the intersection between copyright and designs law, particularly regarding when a two-dimensional artistic work becomes a ‘corresponding design’. The Court explored the historical development of the copyright/design overlap provisions, confirming that Parliament intended to maintain the distinction between two-dimensional and three-dimensional embodiments of designs.

The decision clarifies that while surface designs generally retain copyright protection, this requires the design to be merely applied to rather than ‘embodied in’ the product. The Federal Court held that an embroidered logo on a garment that lightly protruded from the surface was not a corresponding design. The Court’s analysis of when a design is ‘embodied in’ versus simply ‘applied to’ a product remains significant for understanding the scope of design versus copyright protection. The Full Court interpreted ‘embody’ as ‘give a material or discernible form to an abstract principle or concept’.^[18]

The issue of ‘embodiment’ of a product arose again in Seafolly Pty Ltd v Fewstone Pty Ltd.^[19] The Federal Court considered whether embroidered patterns on garments constituted a ‘corresponding design’ that would lose copyright protection under s 77 of the Copyright Act. This case provides important guidance on the requirements for the three-dimensional ‘embodiment’ of artistic works in products under the copyright/design overlap provisions. Building on Polo/Lauren, the Court clarified that features of pattern or ornamentation do not lose copyright protection merely by being stitched onto fabric in a raised way; rather, the product itself must be made in the shape or configuration of the artistic work.^[20] This decision helps define the boundary between designs that must be protected through design registration and those that retain copyright protection, explaining that surface decoration, even if slightly three-dimensional, remains protected by copyright unless it truly determines the product’s shape or configuration.

Certain reproductions do not infringe copyright or “plan on plan” infringements

The Designs (Consequential Amendments) Act 2003 (Cth) also introduced section 77A, which provides additional protection against copyright infringement of an artistic work if it is reproduced during the process of making or selling a non-infringing product.

Section 77A(1) states that reproducing an artistic work or communicating that reproduction is not a copyright infringement if it originates from a three-dimensional product embodying a corresponding design. This applies when reproduction occurs while creating a product that does not infringe copyright under Division 8 of Part III of the Copyright Act. For example, it is not an infringement to produce drawings, casts, or moulds as part of the manufacturing process or to depict the product in sales materials.

Section 77A(2) provides that it is not an infringement of copyright to make a cast or mould embodying a corresponding design if the cast or mould is intended for making products that would not infringe copyright based on the provisions of this division.

Therefore, it is not an infringement to take a three-dimensional product that embodies a corresponding design and create plans from that object, which are then used to replicate the article. ^[21]

The provision was considered in the Full Federal Court decision of Digga Australia Pty Ltd v Norm Engineering Pty Ltd.^[22] The case concerned competing manufacturers of ‘4-in-1’ buckets designed for Bobcat equipment. Norm Engineering had developed and manufactured these specialised buckets since the 1980s and held copyright in certain engineering drawings created in September 2003. In late 2003, Digga Australia examined one of Norm’s buckets and created its drawings to manufacture competing buckets. The key legal issue was whether Digga’s creation of these intermediate drawings, as part of its manufacturing process, constituted copyright infringement. This question had to be considered both before and after the introduction of section 77A, as Digga’s activities spanned this legislative change.

Digga’s drawing of the Pivot Arms would enjoy the immunity provided by the new section 77A because that drawing, like the other Digga Drawings, was made in the course of, and incidental to, the making of the Digga Bucket.

Lindgren, Bennett, and Logan JJ’s judgment confirmed that section 77A of the Copyright Act, introduced by the Designs (Consequential Amendments) Act 2003, filled a significant gap in the copyright/design overlap provisions.^[23] Prior to the introduction of section 77A, two-dimensional drawings made during the manufacturing of three-dimensional products were not protected by the section 77(2) exception to copyright infringement, even though the resulting three-dimensional products were protected. Lindgren J held that while the statutory language of section 77(2) could not reasonably be interpreted to protect such intermediate drawings, Parliament correctly recognised this limitation and addressed it through section 77A, which explicitly provides that reproducing artistic works is not an infringement if the reproduction is derived from a three-dimensional product embodying a corresponding design and is made in the course of, or incidental to, making a product that would not infringe copyright due to the operation of Division 8.

Practical Implications and Strategic Considerations

The interaction between copyright and design requires careful consideration at the outset of any product development process. Once a design is industrially applied or registered under the Designs Act 2003 (Cth), reliance on copyright protection for the underlying artistic work is limited. This means that deciding which form of protection to pursue must be made early in the commercialisation process.

The decision to rely on copyright protection or seek design registration often depends on various factors, including the nature of the work, the intended commercialisation method, and the desired duration of protection. Copyright protection lasts for the life of the author plus 70 years, while design registration provides a maximum of 10 years of protection. However, design registration offers more certain protection against copying of the design when applied to products, as it extends to designs that are ‘substantially similar’.^[24]

This overlap has significant implications for enforcement strategies. Rights holders must consider which rights to assert in infringement proceedings, considering the different tests for infringement under copyright and design law, along with the available remedies in each system.

Trade Marks and Designs Overlap

The overlap between trademarks and designs presents unique challenges and opportunities within Australian intellectual property law. While these two forms of protection serve different purposes— trade marks identify commercial origin and designs protect visual appearance—they can protect the same aspects of a product.

With the introduction of the Trade Marks Act 1995 (Cth), the subject matter capable of protection as a trade mark was expanded. The new definition of a ‘sign’ under the Act clearly recognises that shapes can function as a trade mark as defined in section 17. At that time, this created an overlap with the previous Designs Act 1906 (Cth), which also protected the three-dimensional shape of manufactured articles.^[25] The overlap continued with the introduction of the Designs Act 2003 (Cth).

Remarkably, little attention has been paid to the potential for dual protection of three-dimensional shapes under the registered trademark and designs systems and their possible consequences. Previous reviews of Australia’s trade mark and design registration systems have recognised the potential overlap. However, none has thoroughly examined the issues arising from dual protection, whether theoretical or practical.^[26]

Although both intellectual property regimes allow for the registration of three-dimensional shapes, the rationale for protection under each regime differs. A trade mark functions as a ‘badge of origin,’ enabling consumers to differentiate between goods and services.^[27] Registering shapes as trade marks presents specific challenges not typically faced with traditional word or logo marks. The shape must be capable of distinguishing the applicant’s goods or services, often requiring evidence that consumers recognise the shape as indicating commercial origin.^[28] This distinctiveness requirement can be particularly difficult to fulfil for product shapes that serve functional purposes or are prevalent in the relevant industry.^[29]

Compared to the overlap between design and copyright, the trade mark and design overlap is present across two registration systems. Therefore, there is potential for dual registrations to exist on two national registers. Such an overlap has been described as an ‘accumulation or piling up’.^[30] Researchers have developed a lexicon to identify the circumstances under which the legal subject matter capable of protection under each intellectual property right partially or fully over the same object.^[31] There are five specific types of overlap:

• A simultaneous overlap is when two or more intellectual property rights attempt to protect the same object at the same time.
• A posteriori or subsequent overlap occurs when one intellectual property right is obtained and subsequently expires, and the owner seeks protection with another right.
• A negative overlap occurs when one intellectual property right cannot be obtained, and the owner obtains another right to fill the gap.
• A false overlap occurs when different intellectual property rights are used to protect different intellectual efforts that coexist on the same object.
• A positive overlap is when an applicant may seek to register one intellectual property right before turning to the other intellectual property right for supplementary protection at another point in time (either an applicant has yet to fail in obtaining an initial intellectual property right or is successful in obtaining one).

The taxonomy can be applied in the trade mark/design overlap context.

• A simultaneous overlap occurs when applications for a shape trade mark and design right are filed at the same point in time.
• A posteriori or subsequent overlap can occur when a design right has expired or lapsed. The owner then seeks registration of the three-dimensional shape as a trade mark to obtain ongoing protection.
• A negative overlap can occur when an applicant fails to obtain a registered design and seeks to register a shape trademark to fill a protection gap. Similarly, such an overlap could happen if an applicant cannot secure registration of a shape trademark and then turns to the design system to fill the gap.
• A positive overlap can emerge when an applicant initially seeks to register a shape as a registered design before turning to the trade mark system to achieve dual protection during the examination period or during the term of the original design registration.

Given the nature of the registration systems, these different forms of overlap can be quantified.^[32]

Filing Requirements

Although the overlap is evident in the statutory definitions, additional requirements must be met under each intellectual property system before three-dimensional shapes can be registered and protected.

For example, as discussed in Chapter 5, a design will not be considered new if found in the prior art.^[33] For applicants wishing to achieve dual protection, the overlap is ostensibly limited by the operation of the prior art provision. Where a previously filed trade mark application discloses a shape design (identical in appearance or similar in overall impression) in either two or three dimensions, it can form part of the prior art base to which any subsequent design application will be assessed for newness and distinctiveness. Moreover, prior art citations can include those trade mark applications that may not necessarily seek protection for the product’s shape but include an image of the shape as part of the trade mark representation.

During the examination process, a trade mark application filed with IP Australia can form the basis of a citation as a design disclosure in a document published within Australia.^[34] However, an applicant could navigate this overlap using the grace period provision. If the trade mark application was filed within 12 months before the design application, it could still be considered new.

An example of where cited shape marks resulted in the revocation of a subsequently filed design application is Reckitt Benckiser (UK) Limited [2008] ADO 5. As a decision of the Australian Designs Office, the Deputy Registrar of Designs upheld the examiner’s assessment that design applications 200510024 (registration 302155) and 200510025 (registration 302156) for encapsulated laundry detergent lacked distinctiveness since the shape design was disclosed in previously filed trade mark applications 952206 and 952207. The Delegate determined that both designs and the trade marks were similar in overall impression. Applicants wishing to achieve dual protection would, therefore, need to tread carefully and file a design application prior to a trade mark application.

Read the decision here Reckitt Benckiser (UK) Limited [2008] ADO 5

In addition, the mechanisms of the trademark system likely regulate the potential for dual protection, permitting the registration of a three-dimensional shape only if it is distinctive.^[35] At the time of applying to register a shape mark, the only acknowledgment of the possibility of overlap for three-dimensional shapes is found in the Trade Marks Manual of Practice and Procedure, which stipulates that:

‘there should be no grounds for rejecting an application for registration of a trade mark that is or contains a shape (that is, a three-dimensional object) merely on the grounds that the applicant has a design registration, or a pending application for registration of a design, for the same three-dimensional object’.^[36]

It goes on to say that:

‘the fact that features of shape and configuration of a container for goods have been registered under the Designs Act, does not mean that they are necessarily adapted to distinguish as a trade mark…  The usual tests for capacity to distinguish will apply for these applications as for any other.’^[37]

Dual Protection Playing Out in Court

The case of Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd helpfully illustrates the potential for dual intellectual property protection over the shape of a product. This well-known case involved an attempt to enforce trade mark and design rights over the shape of the rotary head of an electric shaver. Philips had registered in Australia both the design of a three-headed rotary shaver and the two-dimensional image of the three-headed arrangement as a figurative trade mark in class 8 for, inter alia, shaving apparatus.

Read

Comparative Analysis of Protection

The differences between trade mark and design protection are significant and influence strategic decisions about intellectual property protection. Design registration provides a maximum of ten years of protection, while trade mark registration can be renewed indefinitely. However, trade mark protection requires ongoing use of the mark and maintenance of its function as a badge of origin. Design registration, by contrast, provides protection regardless of use, provided the initial requirements of novelty and distinctiveness were met at the time of registration.

The scope of protection also differs significantly between these two regimes. Design registration protects against products that are identical or substantially similar in overall impression to the registered design. Trade mark protection, however, focuses on preventing use likely to deceive or cause confusion about the commercial origin of goods or services. These different tests for infringement mean that conduct that infringes a registered design might not infringe a registered trade mark, and vice versa.

Strategic Approaches to Combined Protection

The possibility of obtaining both design and trade mark protection for product shapes requires careful strategic planning. Design registration might initially be sought to protect a new product shape, while evidence of acquired distinctiveness through use is gathered to support a later trade mark application. This sequential approach can provide immediate protection through design registration and the possibility of indefinite protection through trade mark registration.

However, the public use of a design to build trade mark distinctiveness might prejudice the novelty requirement for design registration. Therefore, businesses must carefully consider the timing of their applications and the interaction between these different forms of protection. The strategy might also need to account for international considerations, as approaches to shape marks vary significantly between jurisdictions.

Patents and Designs Overlap

The intersection between patents and designs represents another unique overlap in Australian intellectual property law, particularly where products embody both technical innovation and distinctive visual features. While the Patents Act 1990 (Cth) protects novel and inventive technical solutions, the Designs Act 2003 (Cth) protects visual appearance. Many products incorporate both elements, resulting in the possibility of dual protection.

This overlap becomes particularly significant in functional designs, where the visual appearance of a product is influenced by or intrinsically linked to its technical function. Understanding the distinction between protecting how something looks (through design rights) and how something works (through a patent grant) is crucial for developing effective intellectual property strategies.

Technical Features and Visual Appearance

The relationship between technical features and visual appearance often complicates the determination of the most appropriate form of protection. As discussed in Chapter 5, the Designs Act 2003 (Cth) expressly states that visual features may, but need not, serve a functional purpose.^[38] This means that design protection can be available even when technical considerations dictate the visual features of a product. However, the protection extends only to the visual appearance, not the underlying technical innovation.

A functional purpose often dictates the shape of a product. For example, the curved handle of a coffee mug might have a particular shape to allow fingers to grip it securely while holding hot liquid. The fact that a visual feature has a functional purpose (or an appearance entirely dictated by a functional purpose) is irrelevant to whether that feature is a visual aspect of the design. However, a visual feature is not defined or understood solely by its purpose.^[39]

The High Court’s decision in Firmagroup Australia Pty Ltd v Byrne and Davidson Doors,^[40] although decided under the previous Designs Act 1906, established important principles regarding functional features in designs. The Court emphasised that even before the explicit exclusion of “method or principle of construction” was added to the previous Act in 1981, features that were too general or merely functional could not be protected by design registration. The Court held that while a design may make an article more useful, features that merely convey a general characteristic of shape appropriate to the article’s function, rather than conveying “one particular individual and specific appearance,” were not amenable to design protection. In this case, although the respondent had copied the appellant’s novel concept of combining a recessed handle with a lengthened face plate for a roller door lock, these were considered general functional features insufficient to convey a unique shape or configuration, and, therefore, could not be protected by design registration, regardless of their novelty, utility or commercial significance.

In British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448, Justice Wootten provided an analysis of the treatment of functional features under the Designs Act 1906, prior to the explicit exclusion of “method or principle of construction” added to the Act in 1981. His Honour rejected the perspective that the Australian definition of “design” implicitly adopted a limitation from the Registered Designs Act 1949 (UK), which excludes features dictated solely by function.^[41] The Court held that, in the absence of an express statutory exception, the general principle established by High Court authorities was that functional attributes were simply irrelevant—they could neither qualify nor disqualify a design from registration. Justice Wootten emphasised that while Dixon J in Macrae Knitting Mills established that the ‘particular practical effect’ of a design should be disregarded when deciding questions of novelty or infringement, this principle indicated that function was entirely neutral, rather than exclusionary, distinguishing the Australian position from the UK approach that explicitly excluded purely functional features.^[42]

Conversely, patent protection focuses on the technical innovations embodied in inventions, regardless of their appearance. A patent may protect a new and inventive technical solution even if its visual appearance is unremarkable. This distinction becomes particularly important when considering products where form and function are closely intertwined.

Comparative Analysis of Protection Requirements

The requirements for obtaining a patent and design protection are similar. Patent protection requires satisfaction of the stringent tests of novelty and inventive step. An invention must be novel when compared with the prior art base and must not be obvious to a person skilled in the relevant art.^[43] The assessment of inventive step involves a substantive evaluation of the technical merit of the invention. While also requiring novelty, design protection has a different threshold test of distinctiveness. Similar to designs, assessments of novelty and inventive step are in reference to the prior art. For the purpose of patent examination, the prior art is restricted to:^[44]

• information in a document that is publicly available before the priority date, anywhere in the world;
• information made publicly available before the priority date through doing an act, anywhere in the world; and
• information contained in certain Australian patent specifications published on or after the priority date of the claim under consideration.

Determining whether to pursue patent protection, design protection, or both requires careful consideration of various factors. When a product incorporates both technical innovation and distinctive visual features, a combined approach may be suitable. However, the timing of any overlapping protection is crucial, as disclosure in either a patent or design application can affect the novelty, inventive step, and distinctiveness assessment of each right. If the representations in the design application disclose the invention, it could undermine the novelty of a subsequent patent application. Similarly, if a patent specification includes drawings that illustrate the claimed invention and disclose a product bearing the design, it can affect the novelty of the design. In the context of patent drawings, examiners will consider whether any design is disclosed in the document.^[45]

To navigate the overlap, decisions about protection strategy often need to be made early in the product development process. The different examination processes and timeframes for patents and designs must also be considered when developing a protection strategy. One strategy would be to file the patent application before a design application – that is, a positive overlap. This approach may be advantageous since applicants can first file a provisional patent application and then pursue a complete patent application within 12 months of filing.^[46] The subsequent complete patent specification can then claim the provisional application’s priority date.^[47] An alternative approach would be to file the applications on the same date – that is, a simultaneous overlap.

Similar to registered designs, during examination of patent applications, some prior art can be disregarded. Information to be disregarded includes any publication or use of the invention within 12 months before the filing date of the complete application.^[48] Therefore, a design application disclosing a patent or patent application disclosing a product bearing a design within 12 months could be disregarded.

Duration and Scope of Protection

Patent and design rights differ markedly in their duration and scope. Standard patents offer up to 20 years of protection, while design registration grants a maximum of 10 years. This reflects the typically shorter commercial lifecycle of product appearances. The scope of protection also differs; patent protection extends to any use of the claimed invention, regardless of its appearance. In contrast, design protection is limited to products that are identical or substantially similar in overall impression to the registered design. Therefore, technical innovations protected by patents can be applied to products with different appearances, while design protection emphasises visual similarity.

Enforcement and Infringement Considerations

The enforcement of patent and design rights involves different considerations and tests for infringement. Patent infringement requires an analysis of whether the alleged infringing product or process falls within the scope of the patent claims, which can involve a complex technical assessment. Design infringement focuses on visual comparison and whether the alleged infringing product is substantially similar in overall impression to the registered design.^[49] These differences in infringement assessment can influence enforcement strategies, particularly when a product might infringe both patent and design rights. The choice of which rights to enforce may depend on factors such as the strength of the rights, the nature of the alleged infringement, and the available remedies.

Practical Implications and Strategies

Strategic Management of Overlapping Rights

The management of overlapping intellectual property rights requires an understanding of both legal requirements and commercial objectives. Australian businesses must navigate complex decisions about which forms of protection to pursue, how to time their applications, and how to effectively manage their intellectual property portfolios. These decisions become particularly challenging when dealing with products that might attract multiple forms of protection.

A comprehensive approach to intellectual property protection begins with the early identification of potentially protectable elements. This involves careful analysis of products from multiple perspectives: their technical features that might warrant patent protection, their visual elements that might qualify for design protection, their brand elements that might be protected as trade marks, and their original artistic elements that might attract copyright protection. This analysis should occur as early as possible in the product development process to avoid losing opportunities for protection.

Commercial Considerations and Risk Management

The commercial implications of overlapping intellectual property rights extend beyond the initial decision to seek protection. Businesses must consider the costs of obtaining and maintaining various forms of protection against the potential commercial benefits. This assessment should account for factors such as the expected market life of the product, the likelihood of competition, and the ease with which competitors might develop alternative solutions.

Risk management also plays a crucial role in developing an intellectual property strategy. This includes conducting appropriate searches to ensure freedom to operate, keeping detailed records of development processes, and implementing suitable confidentiality measures. When dealing with overlapping rights, businesses must also consider the risks of relying too heavily on one form of protection while neglecting others that might provide valuable complementary protection.

Enforcement Strategy Development

The existence of overlapping rights creates both opportunities and challenges in enforcement scenarios. Rights holders must carefully consider which rights to assert in any given situation, considering factors such as the strength of their rights, the nature of the alleged infringement, and the available remedies. The decision might also be influenced by procedural considerations, such as the relative complexity and cost of proving infringement under different intellectual property regimes.

Enforcement strategies must also consider the potential for counterclaims on the validity of intellectual property rights (especially for three-dimensional trade marks). Where multiple rights are being asserted, the risk of invalidating one or more rights must be weighed against the potential benefits of enforcement. This risk assessment should consider how the loss of one form of protection might affect the overall strength of the intellectual property portfolio.

International Protection Considerations

The international aspect of intellectual property protection adds complexity to managing overlapping rights. Different jurisdictions adopt varied approaches to overlapping various forms of intellectual property protection. What is protectable under one regime in Australia may fall under a different regime in another jurisdiction. This necessitates careful coordination of international filing strategies and consideration of how protection in one jurisdiction might influence protection in others.

The timing requirements for international protection also necessitate diligent management. The Paris Convention priority system provides essential opportunities for extending protection internationally, but the requirements and deadlines vary for different forms of intellectual property. Coordinating these requirements across multiple jurisdictions entails careful planning and monitoring.

Conclusion

The intersection of various forms of intellectual property protection in Australia presents both opportunities and challenges for rights holders. In this chapter, we explore how design rights interact with copyright, trade marks, and patents, revealing a complex web of legal provisions and practical considerations. These overlaps reflect the evolving nature of innovation and creativity in modern commerce, where products often embody multiple forms of intellectual property that warrant protection.

The copyright-design overlap, perhaps the most intricate of these intersections, demonstrates the legislative attempt to direct protection for industrial designs into the designs system while preserving copyright protection for purely artistic works. The interpretation and application of the copyright-design overlap provisions continue to challenge courts and practitioners alike, particularly regarding works of artistic craftsmanship and the industrial application of artistic creations.