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Reform of the Australian Designs regime

IP Australia is in the process of reviewing protection for product designs. The review and reforms are taking place in two stages, and IP Australia is currently consulting on both stages.

Stage 1 - ACIP recommendations

Back in March 2015, the Advisory Council on Intellectual Property (ACIP) published their Review of the existing Australian Designs System. ACIP made a number of recommendations, and the Government has accepted several of these. IP Australia is now consulting on how to implement these recommendations, which are intended to improve the existing Designs Act 2003 and deliver "early benefits".

Submissions are sought on three categories;

Scope of design protection

• Options being considered are whether to provide protection for "partial designs"; and considers whether IP protection for only part of a product should be allowed.
• The protection of virtual, non-physical and active state designs, including screen displays, screen icons and graphical user interfaces (GUIs)). At present, protection is only available for products (a thing that is manufactured or hand made).
• The required approach to assessing the distinctiveness of a design, including taking the standard of the informed user.

• Whether to implement a grace period for filing design applications, accompanied by an amendment to preserve "prior user rights";
• Delay publication;
• Remove option to publish but not register.

Simplifying and clarifying the designs system

These recommendations centred around correcting aspects of how the current designs system functions, including

• Whether the terminology "registered design" should be changed. Unlike other jurisdictions, Australian designs are "registered" after a formalities examination only; a "registered" design is not enforceable until it has been issued a certificate (certified).
• Modernizing filing requirements;
• Addressing anomalies, including where Convention applications may not fulfil Australian formal requirements.

Stage 2 - the Designs Review Project

The Stage 1 consultation does not touch on larger issues for design protection in Australia. However, IP Australia is carrying out a Designs Review Project to ask larger questions of whether the current "designs ecosystem" is fit for purpose.

Critics such as industry group the Authentic Design Alliance have argued that shortcomings of the current regime result in scant protection for product design in Australia, and have resulted in a "replicas" market where product design is openly copied.

In Australia, copyright protection is lost for a product once the design is applied industrially (i.e. more than 50 copies are made), unless the design meets the test for a "work of artistic craftsmanship", or is a two-dimensional artistic work. Copyright protection is also lost once the design is published as a consequence of applying for patent or design rights.

In contrast, in New Zealand, industrial application of the design only results in a shortening of the copyright term, to 16 years (or 25 years for a "work of artistic craftsmanship"), rather than a loss of copyright altogether. New Zealand law is unusual in that it offers "dual protection": an application for a patent or a design does not invalidate the copyright, until the patent/design lapses, causing the design drawings to fall into the public domain.

Functionality, aesthetic appeal and design rights

The New Zealand Designs Act states that only designs which have aesthetic appeal are registrable; if the design is purely functional, it is not eligible for registration in New Zealand. In Australia, purely functional designs are registrable.

The rationale for withholding dual protection in Australia has been described by the Australian Copyright Council as "things which are essentially functional and intended for mass production should not get the very extensive protection of copyright law." However, products such as furniture and lighting which serve a functional purpose, but also have artistic quality, may fall through the cracks for IP protection offered by the current regime and require designers to "gamble" on the artistic merit of their works.

For example, a designer may create a high-end pendant lamp intended for industrial production. The lamp is a "work of artistic craftsmanship" which qualifies for copyright protection for a term of 70 years or more, but only if the designer does not apply to register the lamp design. Thus, there is a disincentive to apply for design registration, for which the term is a maximum of 10 years. Another designer creates a lamp which may have artistic quality, (i.e. is not purely functional), but does not meet the threshold for a "work of artistic craftsmanship". Only a design registration offers any protection in Australia for the second lamp.

If you would like more information on protection for product designs in Australia or New Zealand, please contact us.

November 2019