What is the difference between Trade Marks and Designs?

When considering registering a trade mark or design for your business in Australia, it’s important to understand the difference between the two different pieces of intellectual property.  

This article will help you make an informed decision about which protection is best for your brand. Although we will not be discussing copyright here, do keep in mind that there’s often also overlap between trade marks, design and copyright protection. 

What are trademarks and designs?

Both trade marks and registered designs are intellectual property rights, providing a legal shield or sword against other traders trying to profit from your idea and investments. Each one, however, protects a specific type of intellectual property so it’s important to know the differences. 

Trade marks legally protect your business’s unique brand used for your products or your services that helps customers distinguish you from your competitors. Think of them as the badge of origin for your business. Trade marks can protect a business name, logo, phrase, word, letter, sound, smell, picture, shape, movement, aspect of packaging, or any combination of these. Trade Marks can be registered under the Trade Marks Act 1995 (Cth). The owner of a registered trade mark has the exclusive right to apply the brand to the products and/or services it has registered with IP Australia. 

Design rights, on the other hand, protect the unique visual appearance of a manufactured item, meaning an actual and tangible item, that is produced on a commercial scale. Visual features that will give the product a unique appearance include the shape, pattern, configuration and ornamentation. For example, the design of a Coca Cola bottle. Such a design can be registered under the Designs Act 2003 (Cth). The owner of the registered design has the exclusive right to apply the design to the product category it has registered under. 

Take, for example, a new car brought to the market. The name of the brand, the logo(s) used for this brand, a combination of those two, the taglines used when marketing and advertising this brand, can all be protected with trade marks. However, the unique visual elements that are part of the car’s identity, adding to its value, can only be protected with a registered design with IP Australia.  

What can be a Trademark but not a Design?

Clearly smells, sounds and motions cannot be designs, and it would be stretching the definition of a registered design to cover words – though if the typography of a word mark was new then this could be covered by a registered design.  

What can be a Design but not a Trademark?

If the visual aspects of the product (i.e. shape, patterns) of the item is determined by its function, and it is that which gives added value to the product, that aspect cannot be protected with a trade mark. 

What are the requirements for registering Trademarks vs Designs?

The processes of registering a trade mark and a design in Australia are different. However, they both start with an application to the Australian intellectual property office, being IP Australia. 

Trade Marks

For trade marks, an application stating what the trade mark is, as well as the goods and services the trade mark will be used for must be submitted to IP Australia.  

IP Australia then performs an examination process to determine if the trademark or patent application meet various legal requirements. 

If your application does not meet the stipulated requirements upon examination, you will receive an Adverse Examination Report. This will detail any issues detected, along with the examiner’s reasoning. The report may suggest options for overcoming any issues highlighted by the examiner. However, important to remember is that there’s often options to overcome any issues other than those mentioned by the Examiner. This is why it’s so important to seek legal advice if you’ve received a Report from IP Australia, and discuss strategies, risks and possible outcomes with a trade mark expert.  

If you can address the issues and provide any required information, the examiner may reconsider their initial findings and accept your application. 

Alternatively, if your trade mark application meets the relevant requirements, it will be advertised in the Australian Official Journal of Trade Marks for 2 months. Third parties then have the opportunity to oppose to your trade mark registration before it proceeds to a registered status. If it is not opposed, IP Australia will officially register your trade mark and issue a Certificate of Registration. 

 A registered trade mark grants you exclusive rights to use, license and sell the mark. It also gives you the right to take legal action against others using your trade mark. This makes a registered trade mark an effective marketing tool to develop a strong brand and to maintain brand loyalty from customers.  

Registered designs

To register a design, it must be visually new and distinctive.  

This means a design cannot have been: 

• publicly used in Australia;  
• published anywhere in the world;  
• disclosed in a prior design application; or 
• considerably similar in the overall appearance to other registered or non-registered designs publicly used in Australia.  

An application for an Australian design is accompanied by one or more representations which illustrate the design to be protected. The representations are typically in the form of drawings but may also be photographs or digital images. 

An application for an Australian design proceeds directly through to registration following a check for formalities compliance. Once registered, your design can form a barrier to the acceptance of other traders’ designs during their examination process.  

Examination of an Australian design registration is optional. However, the design registration cannot be enforced until the design has been examined and then certified following successful examination.  

You may wish to consider requesting examination of your design if you intend to sell or licence your design, or if you consider infringement is occurring. Obtaining a certificate of examination (Certification) will confirm that your design is new, distinctive, and fully enforceable.  

Without examination, contact can still be made with an alleged infringer of your design. However, formal legal proceedings will require a Certification. 

What’s the duration of protection for Trademarks vs Designs?

A trademark registration will last 10 years and can be extended indefinitely with 10-year intervals by payment of a renewal fee. Crucial to bear in mind however is that, once you haven’t used a registered trademark for over 3 years, a competitor can seek to have the mark removed from the register on the grounds of non-use. 

An Australian registered design lasts for 5 years and can only be renewed once for another 5 years. A design right can therefore only be registered for a maximum of 10 years in Australia. In those 10 years, you have exclusive rights to commercially exploit your design. 

Even after your design rights expire, the commercial success of your registered design can help increase the value for your brand. This is likely because consumers would still retain brand loyalty and will always associate the design with your business. 

What about Shape Trade Marks vs Designs?

You may have noted above that a trade mark can be filed for a shape, which sounds very similar to a design. A shape trade mark is a trade mark that consists of a three-dimensional shape. While there’s certainly some similarity between the two, here are some key distinctions between shape trade marks and designs: 

• A shape trade mark distinguishes the shape of your goods from those of your competitors, whereas design rights protect the overall ‘visual appearance’ of your goods;  
• A trade marks can already be in use in the marketplace before registration, whereas designs must be new and distinctive; 
• Shapes that are functional are difficult to protect with a trade mark, and can instead be protected with design rights, as long as it’s not considered commonplace or similar to other published designs;  
• Trade marks can be registered indefinitely, whereas design rights can only last for a maximum of 10 years. 

Can I Register a Trademark and a Design for the same product?

Yes, you can! A trademark can supplement the protection provided by a registered design, and vice versa, subject to your product being eligible for both intellectual property rights. 

Key Takeaways

You might want to incorporate both design rights and trade marks as part of your IP strategy, depending on the nature of your goods.  

If the way your new and innovative product looks is what sets it apart from those of other traders, then a design may give you the intellectual property protection you need. You should consider design protection before disclosing your design to the public.  

Unlike design rights, a trade mark can already exist in the marketplace and be renewed indefinitely. 

Our team of lawyers, attorneys and specialists can provide you with tailored advice on the type of intellectual property protection you need and can help you get started to obtain this protection.  

For more information or to talk to one of our team members, contact us now for a complimentary phone call with one of our experts. 

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