As a result of a review into Australia’s designs law by the Advisory Council on Intellectual Property, the federal Government recently passed the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) (Amending Act). The Amending Act has brought about a number of changes to the Designs Act 2003 (Cth) (Designs Act) which are aimed at improving Australia’s designs system to provide additional support to designers and encourage innovation.
Some of the amendments incorporated by the Amending Act have already come into effect, with the remainder due to commence in early 2022.
An overview of the key amendments is set out below.
Under the Designs Act, a design is capable of registration if it is new and distinctive when compared with other designs (whether or not those other designs are registered). Previously, in deciding if a design was too similar to another, the standard to be applied was the perspective of an “informed user”. This led to some confusion as to whether the relevant perspective was that of a consumer or could include the perspectives of other people who were familiar with the design but not necessarily consumers.
The Designs Act now provides that the standard to be applied is that of a “familiar person”. A “familiar person” is someone “who is familiar with the product to which the design relates, or products similar to the product to which the design relates (whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).”
Accordingly, a “familiar person” need not be a user of the product to which the design relates and can encompass a broad range of perspectives, which could include experts on the products and not just everyday consumers.
Extension of grace period
It is standard practice to file an application for registration of a design prior to using or publishing the design in the marketplace. This is because prior publication of the design would likely mean that it is no longer new and distinctive and therefore unable to be registered.
Currently, the Designs Act provides a six (6) month grace period, meaning that any use or publication of a design within the six (6) month period prior to the design application being filed is disregarded when determining if the design is new and distinctive.
From early 2022, the grace period will be extended to twelve (12) months. This will likely give the creators of designs greater peace of mind that inadvertent disclosures (at least within the grace period) will prevent registration of their designs.
New Infringement exception
While the grace period for filing a design application will be extended, the Designs Act will soon also provide a new defence to claims of design infringement. If accused of design infringement, third parties will not be liable if they can show that they have used the relevant design, or taken definite steps to do so, prior to the relevant design application being filed. In short, a third party will not be liable for design infringement if they can show that they used the design during the grace period. In light of this defence, design owners should be wary of filing design applications towards the end of the grace period.
From early 2022, an exclusive licensee of a registered design will have the ability to commence proceedings for design infringement. Under the current regime, only registered owners have the right to sue for design infringement. If an exclusive licensee commences design infringement proceedings, they will be required to make the registered owner a defendant in the proceedings.
Currently, the Designs Act provides that an applicant has six (6) months to request registration of a design from the time that a design application is filed. The Amending Act will introduce amendments providing that a design application will be automatically registered after six (6) months, unless registration is requested sooner.
Applicants could also request that a design be published rather than registered. Publication of a design would mean that it would form part of the prior art base against which other design applications would be compared, but would not provide the protection of registration. The Amending Act has removed the ability for applicants to request that their design be published rather than registered.
Those relying on design registrations may need to update their internal processes and review procedures in light of the new amendments to the Designs Act.
If you have any questions or concerns related to the use and registration of designs, please do not hesitate to contact us.