Prosecution Strategy for Multiple Designs & Variants

When businesses develop new products, it’s rarely just a single design that comes to life. Often, there are several variations in shape, colour, or style, or even a full product range with coordinated designs. Protecting these designs effectively is critical for preventing copycats and securing long-term commercial advantage.

Multiple Designs for One Product

Under section 22(1)(c) of the Designs Act 2003, an applicant may register more than one design applied to the same product. For instance, if you have four variations of a coffee mug, you can file a multiple design application covering each variation.

Some practical requirements must be met when submitting a design application to ensure clarity, compliance, and proper processing. First of all, each application must nominate a single product name, i.e. for example, “mug.” This helps define the scope of the design and ensures that the registration is tied to a specific item.

Each design must also be represented distinctly. It is not permissible to show more than one design on a single drawing sheet, as this can lead to confusion and misinterpretation. Clear separation of designs is essential for accurate examination and registration.

Even when multiple designs are submitted together, they are treated as individual applications. Each design is assigned its own application number and, eventually, its own registration number. This allows each design to be examined and managed independently.

Also, each design attracts a separate application fee. Applicants should be prepared to pay individual fees for each design submitted, even if they are part of a broader collection or series. These requirements help maintain the integrity of the registration process and ensure that each design is properly evaluated on its own merits.

A subtle but important point: if a design application is mistakenly filed under Section 22(1)(a) (covering one design applied to one product) but actually includes multiple designs, the applicant may preserve priority for each design by filing additional applications derived from the original (base) filing. These can be lodged as “further design” or “excluded design” applications.

The key distinction is that excluded designs are not subject to central attack, meaning that if one excluded design is opposed or invalidated, it does not affect the others. Conversely, further designs remain linked — if one is attacked, all associated designs may come under scrutiny. For this reason, we generally advise clients to use the excluded design option whenever applicable.

If, during formality examination, IP Australia identifies multiple designs and the applicant does not wish to pursue all of them, a response must be filed requesting that only one design be retained. The applicant must then file separate further or excluded design applications for the remaining designs if protection is desired. If no such filings are made, the unfiled designs will lose their priority and rights.

The following example illustrates four distinct mug designs, each of which requires its own application fee. Although these designs may be submitted together as part of a multiple design application, they remain individually identified and are assigned separate design numbers once registered.

Multiple Designs for Multiple Products

Section 22(1)(d) permits applicants to register multiple designs across different products, provided all those products belong to the same Locarno class. The Locarno system is an international classification that groups products based on their nature.

For example, a homewares company may file a single application covering a set of designs for plates, bowls, and mugs, i.e. all within Locarno Class 07 (Household goods).

Key requirements here include that the products must fall under the same class, although they may be in different subclasses. Alos, just as with single-product multiple design applications, each design must be distinctly identified. All such designs must have the same entitled person(s). If not, separate applications are required under sec 22(2).

A contrasting scenario highlights the limits of this approach. If an applicant attempts to include a hat (Class 02), a watch (Class 10), and a handbag (Class 03) in one application, the Registrar will require the applicant to delete or exclude designs until only one class remains represented.

The Registrar’s Formalities Check

Section 40 of the Act outlines the Registrar’s duties when reviewing multiple design applications submitted together. Prior to registration, the Registrar must ensure that all products included in the application fall within the same Locarno classification. This classification system helps group similar types of products, ensuring consistency and relevance in the examination process.

If the applicant claims the design as a “common design” across multiple products, the Registrar must be satisfied that the design is genuinely common to all items listed. This means the design must create a substantially similar overall impression across the different products, rather than being a loosely related concept.

The Registrar also verifies that the application meets all formal requirements. This includes ensuring that representations are clear and accurate, and that product names are properly specified. Additionally, the Registrar must confirm that there are no grounds for refusal under section 43(1), such as the design being contrary to law or public morality.

Once these conditions are fulfilled, each design is registered individually, even though the applications remain linked throughout the examination process. This approach allows for efficient handling of related designs while maintaining the integrity of each registration.

Prosecution Strategy for multi design applications

• Plan Your Filing Approach Early

Product development teams often generate numerous design variants. Before filing, consider which variants are commercially significant, whether products fall under the same Locarno class. And whether all designs will have the same ownership.

This early planning helps avoid wasted fees and the need to divide applications later.

• Use Multiple Applications for Coverage

A common temptation is to include as many designs as possible in one application. While this can save time initially, it may complicate prosecution if products belong to different classes or ownership structures differ. Sometimes filing multiple, smaller applications is strategically safer.

• Preserve Filing Dates through conversion

If more than one design is mistakenly included in a single-design application, use the conversion mechanism under sec 22(1)(a). By paying additional fees, you can avoid losing the priority date while ensuring proper treatment of each design.

• Ensure representation quality

The biggest risk to multi-design filings lies in unclear or overlapping representations. Each design should be presented in its own set of drawings or images, with no duplication on the same sheet. Poor representation is one of the most common reasons for receiving formalities notice.

• Keep Commercial Flexibility in Mind

Because certification is optional, applicants may file multiple designs now and decide later which designs to certify and enforce. This allows businesses to adapt their enforcement strategy to market realities.

For example, a company launches a kitchenware line with three designs, i.e. a teapot, a cup, and a saucer. Because they all belong to Locarno Class 07, they can be filed together in one application.

Whereas a designer develops handbags, hats, and scarves, despite belonging to different classes, these cannot be combined. Filing separate applications is required.

On the other hand, a toy manufacturer creates four versions of a toy car (different wheel designs). Each version can be filed as a multiple design application under one product name, with clear separation in representations.

How can we help?

So, protecting multiple designs or design variants is not just a legal formality, it’s a strategic decision that can shape a product’s market exclusivity. The Designs Act 2003 provides flexible mechanisms for filing multiple designs, whether across a single product or multiple related products, but success depends on careful planning and precision.

At LexGeneris, we guide applicants through this process, i.e. from assessing whether products fall within the same Locarno class, to ensuring representations meet formalities, to building a prosecution strategy that aligns both budget and commercial goals. By filing smartly, businesses secure the broadest possible protection for their creative efforts, while retaining flexibility for the future. So, contact us now for a free consultation.