The slowly turning wheel of Australian designs law – the Designs Amendment Act 2021 (Cth)

The slowly turning wheel of Australian designs law – the Designs Amendment Act 2021 (Cth)[1]

A number of long overdue changes were enacted into law in September 2021, amending the Designs Act 2003 (Cth)[2]. The genesis of the reform was a report by the Advisory Council on Intellectual Property (ACIP) following its 2015 review of the Australian designs system. However, the wait is not quite over as most of the changes will not take effect until next year, including the introduction of a much-anticipated grace period.

Of those amendments already in place and effective from 11 September 2021, one item of significance is the modification of the hypothetical addressee used to assess the validity (i.e., newness and distinctiveness) of registered designs and the infringement of registered designs: previously, the ‘informed user’. This addressee is now the ‘familiar person’. In basic terms, this means the addressee no longer needs to be a user of the product, and therefore may encompass a broader range of skilled persons, consumers, and others with awareness of the product.

Amendments that will take effect on 11 March 2022[3] include:

1. A 12-month grace period intended to protect the rights of owners and designers where they inadvertently disclose their design before an application is filed. Previously, the Australian grace period for designs was so narrow as to be almost irrelevant, and it was also inconsistent with the laws of most of our major trading partners including in Europe and the USA.

Some important limitations of the new grace period are found in the fine details of the legislation:

    • only disclosures occurring on or after 11 March 2022 fall within the scope of the provision;[4]
    • the grace period is set by the priority date of the Australian application.[5] For example, if priority is claimed to an overseas design filing, disclosures up to 18 months before the Australian registered design filing may be captured (e.g. in the case of AU filings made in late 2023); and
    • disclosures by national or international designs bodies will not be covered.[6] For example, if an owner files a design application overseas, then that overseas designs office publishes the design, and no priority to the overseas application is claimed in a later filed Australian registered design application, the preceding official publication can invalidate the later filed Australian application.

2. An exemption from design infringement for persons who have used, or taken definite steps to use, a comparable design before the priority date. Importantly, this exemption applies not just to earlier activity relating to a design that is independently created, but also where it was copied following disclosure of the design before the priority date. This highlights the perils of a designer relying on the grace period and not filing a design application at the earliest opportunity;

3. Providing standing to an exclusive licensee of a registered design to bring proceedings for infringement of the design. This change means Australian designs law is now better aligned with existing patent and trade mark law.

While much relief may now follow the plugging (or at least, the impending plugging) of many gaps in Australian designs law, this author is reminded of the time-honoured saying that “the wheels of justice turn slowly, but grind exceedingly fine”. An old proverb that remains as true as ever, particularly in relation to Australian designs law.

As always, should there be any questions on how these new law changes will operate in practice and how they can be best utilised to protect your design interests, please do not hesitate to contact our experienced attorneys, Gavin Doherty and Michael Smith with any queries.

[1] In full, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) (the Designs Amendment Act 2021).

[2] The Designs Act 2003 (Cth) itself took many decades to come to fruition, finally replacing its 1906 predecessor.

[3] Unless a Parliamentary proclamation is made to bring the commencement date forward: see section 2 of the Designs Amendment Act 2021.

[4] Subsection 17(1A) of the Designs Amendment Act 2021.

[5] Subsection 17(1) of the Designs Amendment Act 2021.

[6] Subsection 17(1B) of the Designs Amendment Act 2021.

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