The Australian government has responded positively to the Advisory Council on Intellectual property’s (ACIP’s) review of the Australian designs system in a report accessible here. The purpose of this review was to determine whether the Designs Act (2003) was meeting its initial goals of providing a designs system which is robust and provides effective rights, and whether policy decisions implemented in the Designs Act are suitable in light of international and technological developments in the area.
While seemingly not as prominent as their patent and trade mark counterparts, design registration is often used as part of a comprehensive IP strategy. In a saturated technical field, where the opportunity for a patent is limited, the visual appearance of a product may be key to differentiating your products from those of competitors. Indeed, two of the biggest filers of design applications in Australia in 2016 operate in the saturated mobile phone technology space.[1]
In a final report released in March 2015, the ACIP made 23 recommendations for improving the present system relating to international harmonization on several fronts, procedural aspects of application and certification, the threshold for protection and subject matter suitable for protection, as well as enforcement.
The government has taken a largely positive stance on harmonisation of Australia’s design practices with those of our major trading partners and with streamlining the procedural process for filing in multiple countries via, for example, registration of international designs rights. The Hague Agreement Concerning the International Registration of Industrial Designs (‘Hague Agreement’) makes available a streamlined mechanism for the filing of international design applications similar to that provided by the Patent Cooperation Treaty (PCT) for patent filing and the Madrid Protocol for trade marks.
The government has accepted ACIP’s recommendation to investigate the implications of joining the Hague Agreement based on international usage of the regime and to actively participate in negotiating the Designs Law Treaty which seeks to establish global standards for design registration. A favourable consequence of Australia accessing to the Hague Agreement for design application filers will be a likely extension of the term of their design protection from the current 10 to a maximum of 15 years.
This position of the ACIP and the government will act to reduce international differences and better facilitate Australian applicants seeking international protection.
Other ACIP stances that were positively received by the government include:
- Introduction of a 6-month grace period to protect the owner of the design from inadvertent disclosure.
- Using the term “uncertified design” in relation to designs which, while registered, have not been substantively examined.
- Removing the option of the publication regime (as an alternative to design registration).
- Retaining the requirement of distinctiveness and section 19 of the present Designs Act which set out the test for differentiation of a design application over other known designs.
Recommendations conditionally supported by the government and/or requiring further investigation include:
- Given that most applicants tend to file more than one design at a time, a reduction in fees for filing multiple design applications.
- Allowing amendment of the Statement of Newness and Distinctiveness (used by applicants to identify particular visual features of their design as new and distinctive and so to which the examiner must have particular regard) until certification as long as it does not broaden the scope of the design owner’s rights.
- Protection of virtual/non-physical designs such as GUIs; which create unique user experiences.
- Compulsory examination by the first renewal deadline (at 5 years) to reduce the number of unnecessary designs on the register and uncertainty in the market.
- Allowing registration of the visual features of parts of a product which is in alignment with designs practice in key foreign jurisdictions.
- Automatic publication at 6 months and an innocent infringer defence, which may allow for damages for infringement to apply from the date of publication of the design.
- Reconciling overlap provisions of section 18 of the present Designs Act with those of the Copyright Act 1968.
The government has indicated they do not consider it necessary to change the following aspects of the system:
- Lack of Border protection measures
- Lack of protection of unregistered designs
- Infringement provisions under section 71 of the Designs Act
Consensus going forward is pending a final report by the Productivity Commission into multiple areas of intellectual property protection systems in Australia, which may further define the government’s stance on the matter of designs.
Click here for a link to the Designs Act (2003).
Click here for access to the ACIP report and the government’s response.
[1] IP Australia. Property Report 2016 (https://www.ipaustralia.gov.au/ip-report-2016)