Australia: Government Responds to Advisory Council on Intellectual Property’s Review of the Designs System

by Lauren John (Allens – Australia)

In 2012, the now defunct Advisory Council on Intellectual Property (“ACIP”) was asked to investigate the effectiveness of the current Australian designs system in stimulating innovation by Australian users, and the impact the designs system has on economic growth. ACIP released its report in May 2015. The Federal Government released its response in May 2016.

Grace period

The Government accepted the recommendation to introduce a grace period, together with a prior user defence.

At present, an applicant can destroy its chances of securing a registered design through premature publication, as the design becomes part of the ‘prior art base’ against which the registrability requirements of newness and distinctiveness are assessed. A grace period will provide designers with more flexibility in cases of inadvertent disclosure and will better align Australia’s design laws with other jurisdictions, including Europe and the US. A prior user defence against allegations of infringement will off-set any disadvantage to third parties who derive their knowledge of a design through a publication covered by the grace period.

ACIP also recommended that applicants who rely on the grace period to protect the validity of their design rights be required to file a declaration to that effect (that is, only declared prior disclosures will be excluded from the prior art base).

It is unclear when a grace period will actually be introduced. The Government has said that the precise details, including the length of the grace period (ACIP recommended six months) and the declaration requirements, will be ironed out following “further stakeholder consultation and development of international norms.”

Unregistered design rights

An unregistered design right gives its owner the right to prevent unauthorised copying of the design. However, in contrast to a registered design right, it is not a monopoly right. Despite such rights being available in the United Kingdom and Europe, the Government accepted the recommendation that Australia not introduce protection for unregistered designs, noting that the submissions to ACIP were generally opposed to the introduction of such protection.

This emphasises the need to secure registered design protection in Australia.

Copyright/designs overlap provisions

In Australia, under the copyright/design overlap provisions in the Copyright Act, if a copyright owner industrially applies a corresponding design to articles which are then dealt with commercially, and the corresponding design has not been registered as a design, it is not an infringement of copyright to reproduce the work by applying the corresponding design. ACIP recommended the relevant provision of the Designs Act (which preserves the newness and distinctiveness of a design in certain circumstances, notwithstanding the previous use made of the artistic work which is the subject of a corresponding design) be made consistent with the overlap provisions in the Copyright Act. The Government accepted this recommendation “in principle”.

In essence, the current copyright/designs overlap regime will remain in place which means that designers who fail to register their designs before industrially applying them risk losing both copyright and design protection.

Extension of customs seizure provisions

Disappointingly, the Government has not accepted the recommendation to extend the border protection measures that currently apply under the Trade Marks and Copyright Acts to allow for the seizure of alleged design infringements which are identical to certified designs. The Government has put this recommendation in the too-hard basket, saying that the introduction of such measures would “pose a range of practical difficulties” and would be resource intensive for the Australian Border Force to implement.