How can I protect my designs?

Last time I talked about Design Registration, but I am often asked by potential exporters how they can protect their designs. More often than not the client’s designs are already in the public domain so they therefore cannot get design protection.

In these cases, I recommend shape trademark registration. You are all probably aware of the need for trademark registration for your name, logo and even slogan, but not many people know that they can protect the shape of their product.

Shape trademark protection is slightly different from design protection in that the dimensions of the design are not protected, merely the shape.

Some examples of shape trademarks you may recognise are:

• The Louis Vuitton bag buckle
  
• The Oroton bag handle links
  
• The soles of Camper shoes
  
• The Tiffany & Co box
  
• The Dorothy the Dinosaur cap
  
• The shape of Vans sneakers

Because these are registered trademarks, no one else can make a bag buckle in the shape of the Louis Vuitton hexagonal bag buckle for example.

Capable of Distinguishing

A shape mark needs to pass the same tests as a word mark, the most important test being that the shape must be capable of distinguishing the goods from the goods of others. The same test of whether “other traders are likely in the ordinary course of their business and without any improper motive to desire to use the same shape or some shape nearly resembling it upon or in connection with their own goods” applies.

There are a number of considerations which an examiner would take into consideration in determining whether or not a shape was capable of distinguishing a good.

Shapes that are commonplace for the goods in question (eg. wine bottle, beach umbrella or rabbit shaped Easter egg) are likely to be needed by other traders and are therefore not capable of distinguishing.

Functionality

If a shape has significant functional features it is also not capable of distinguishing as others are likely to need to use the shape. Some things which point to functionality are:

• Shape essential to the use or purpose of use of the product.
  
• Shape results from comparatively simple, cheap method of manufacture.

Further, if a shape is intrinsically functional with an engineering advantage even though it is yet to become commonplace, it could be held that because of its utility it should remain open for all to use.

However, even if something was functional (eg. a box) other features of a mark may be sufficient to allow for acceptance where it is obvious that the applicant is not seeking or gaining rights in the functional aspects.

For example, a wheelie bin would not be registrable as it is a functional piece of equipment, but a wheelie bin shaped like a lighthouse would be registrable as other traders would not “without improper motive” seek to use the presentation of a bin in the shape of a lighthouse in connection with their goods.

So if you have come up with an amazing fabric design, shoe design, bottle design or bag design then look into shape trademark registration. The application process is the same as for other trademarks as is the cost.

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Lynda Slavinskis is an outgoing, intuitive and commercially savvy lawyer. She has worked in-house at Sussan Corporation and Tattersall’s and now assists small and medium businesses with import, export, leases, franchising, employment and general business advice as principal solicitor of Lynda Slavinskis Lawyers & Consultants. Lynda is on the Victorian State Government’s Small Business Advisory Council.