Government’s Advisory Council recommends changes to the Australian Designs system

By Fraser Smith

By Fraser Smith

Earlier this year we reported on options proposed for changes to the Australian designs system from an Advisory Council on Intellectual Property (ACIP) options paper (see article here). As a result of that options paper submissions were invited and consultations held in the major Australian centres. Based on the identified issues, options, and consultations, ACIP has now issued a final report on their recommendations for improving the designs system in Australia.

The recommendations in the final report are in the form of suggested changes to the existing legislation. The current Designs Act 2003 (Cth) (hereinafter ‘Current Act’) made a number of large changes to the previous designs system. Since its inception a number of concerns have been raised, particularly in relation to the Act’s role in stimulating innovation and its impact on economic growth in Australia.

After three years of review ACIP believes that there is a clear need for increased international harmonisation, several changes introduced by the Current Act need to be revised, and there is scope to improve designs protection and clarify the law. To this end, ACIP has made 23 recommendations in its final review, including several recommendations for no changes of certain portions of the current system. Some of the more pertinent recommendations are summarised as follows:

1. International Harmonisation

Australia is currently not a member of the ‘Hague Agreement Concerning the International Deposit of Industrial Designs’ which provides International design rights administered through the World Intellectual Property Organisation (WIPO). ACIP recommended commencing investigations into the implications of joining the Hague Agreement. ACIP also recommends actively working through a Designs Law Treaty process to promote harmonisation of design filing requirements.

Currently the maximum term for designs in Australia is 10 years. Under the Hague Agreement the maximum term would be 15 years. ACIP recommends extending the maximum term from 10 years to 15 years only if a decision is made to join the Hague Agreement.

2. Design Terminology

Currently a design application progresses through to registration after a formality examination only. However, registered designs cannot be enforced unless they successfully negotiate substantive examination resulting in the registered design being ‘certified’. This terminology can be confusing to those who do not understand the system and, accordingly, ACIP recommend changing the name of a registered but uncertified design to ‘uncertified design’ to make it clear that the design does not, until certification, confer enforceable rights.

3. Compulsory Examination

The current 10 year term comprises two five year periods with a renewal fee being payable at the end of the first 5 year period to be able to take advantage of the second 5 year period. Other than to enforce a design registration, there is no need to request examination and undergo a substantive examination process. In fact, a large number of design registrations are never examined during their term. ACIP recommends requiring a request for examination of the design by the five year renewal deadline. If this recommendation is accepted, ACIP also recommends that a system of opposition following certification be introduced.

4. Amendments to Statement of Newness and Distinctiveness

In Australia design applications can be accompanied by a statement of newness and distinctiveness that can point out features considered to be particularly new and distinctive to the design. Once the design proceeds to registration, however, it is not possible to amend this statement. During examination (for certification) it may be desirable to amend the statement to draw attention to features that are specifically new and distinctive in light of the findings of the Examiner (e.g. prior art), but this is not possible as examination occurs after registration.

To resolve this issue ACIP recommends that it should be possible to amend the statement of newness and distinctiveness to identify particular visual features of the design, up to the point of certification.

5. Grace Period

It is a requirement for designs to be new and distinctive at the time of filing. Any applicant who publicly discloses their design before filing a design application is therefore excluded from being able to obtain a valid design registration. This occurs fairly often in relation to uninformed designers who do not realise the value of their designs and/or the possibilities to protect them until after they have disclosed them.

ACIP recommends a six month grace period be introduced to allow applicants to obtain a design in light of an earlier (within six months) public disclosure. To prevent abuse of this grace period, ACIP also suggest the introduction of a prior user defence and the requirement to file a declaration to obtain the grace period.

6. ‘Virtual’ Designs

Currently virtual designs, such as a graphical user interface (GUI), are not protectable in Australia because the virtual design itself is not a product and the product which it relates to must be considered in a ‘resting state’.

ACIP recommends reconsidering the treatment of such virtual or non-physical designs by allowing products to be considered in an ‘active’ state and not just in a ‘resting state’.

7. Customs Enforcement

ACIP recommends that the Government consider introducing border protection measures that allow seizure by Customs of products embodying designs which would result in alleged design infringements due to their being identical to certified designs. This would be consistent with existing measures in place for Trade Marks and Copyright.

ACIP’s recommendations will now be considered by the Australian Government. We look forward to seeing their response and to finding out which recommendations and changes are adopted and when they are likely to be implemented. On the basis of past reviews, we would expect at least some of the report’s recommendations to be acted on by the government.

If you are interested in reading further about these recommendations and the proposed changes to the Current Act, the full final report which lists all recommendations in full with detailed comments can be found here:

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