Australian Designs Act changes take effect

The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (“the Act”) received Royal Assent on 11 September 2021. 

Introduction

The Designs Act 2003 was only 8 years old when the former Advisory Council on Intellectual Property (ACIP) was asked to investigate the effectiveness of the designs system in stimulating innovation by Australian users and the impact the designs system has on economic growth.  By comparison, New Zealand’s Designs Act 1953 is nearly 70 years old.

ACIP issued their final report in March 2015 (“the ACIP report”).  On 6 May 2016, the Australian Government responded to the ACIP report and agreed to the majority of the recommendations.  IP Australia also carried out a Designs Review Project to ask larger questions of whether the current "designs ecosystem" is fit for purpose (see our previous article).  The ACIP report and review project have resulted in the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (“the Act”).

The purpose of the Act is to provide more flexibility for designers during the early stages of securing registered design protection, and to make several technical amendments that will simplify and clarify aspects of the designs system.  It recognises the need to counterbalance any expansion of rights for designers with protection for third parties.

Key changes

  • 12-month grace period for applying for registration after a design has been published by a “relevant entity” (not including the Australian Designs Office or a Designs Office in a foreign country);
  • Balancing the grace period, an infringement exemption for prior use;
  • Automatic registration and publication of the design after six months (if not requested earlier);
  • Relief from “innocent infringement” prior to registration;
  • An exclusive licensee can take infringement action;
  • Amendment of the definition of "a familiar person" from whose point of view similarity of designs is assessed;
  • Expanding the Court's powers to revoke design registrations;
  • A six-month grace period for payment of the renewal fee.

A more detailed summary of the changes can be found here.

The review has resulted in no change for the following:

  • Protection for "partial designs";
  • The protection of virtual, non-physical and active state designs, including screen displays, screen icons and graphical user interfaces (GUIs)).
  • Altering the terminology "registered design", which causes confusion given Australian designs are "registered" after a formalities examination only; and must be “certified” by substantive examination before they can be enforced.
  • The maximum term for a design of no more than 10 years, compared with 15 in New Zealand.

Commencement

The amendments to the definition of familiar person and the Court’s increased power in revocation proceedings commenced on 11 September 2021.  The rest the Act’s provisions will commence on 10 March 2022.

September 2021

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