The new Act replaces the Designs Act 1906 and introduces a new system that strengthens requirements and provides a fundamental change to the registration and protection of industrial designs in Australia.
A design is considered to be the overall appearance of a product with one or more distinctive visual features. Visual features include shape, configuration, pattern and ornamentation of a product, but not the feel of the product, what it is made from or how it works.
A registered design can be a valuable commercial asset. If you own a registered design that has been examined and certified, you can take steps to enforce your design rights and prevent another person from using your design without permission.
A registered design is your personal property and, like real estate, it can grow in value, be sold or ‘rented’ by a licensing agreement.
The Designs Act 2003 aims to provide applicants with a better chance of protecting their designs through a more streamlined registration system, stricter eligibility and infringement tests and better enforcement and dispute resolution procedures.
One significant change is that applicants will be given the choice of whether they wish to register or publish their design. Choosing the registration option will mean that after your design undergoes a formalities check, you will receive a certificate of registration.
Choosing publication of your design will not give you any rights but, because it is published, it prevents others from gaining any rights to the design.
Other significant changes include clearer definitions, a reduced registration period from sixteen years to ten years and substantive examination will only occur after registration and only upon request.
What are the key benefits of the new system?
A more streamlined registration process
The Designs Act 2003 will provide a more streamlined registration system. A design application can be filed containing one design, a single design in relation to many products or multiple designs provided all the designs fall within the same classification class.
Applicants will have six months to decide to register or publish any of the designs in an application, providing a reasonable time in which to make a decision.
Under the new system, design applications will only undergo a formalities check prior to being registered. The Act implements a system of post-registration examination for substantive issues.
Substantive examination will only be undertaken if requested. This means design applicants will receive their registration much faster than under the previous Act.
Stricter eligibility and infringement tests
The Designs Act 2003 will implement a higher threshold test for validity of designs. This new threshold test will be a two step test; namely, a design is not a registerable design (ie able to remain on the register) unless it is both new and distinctive.
This test will provide that minor or insignificant changes to a design are irrelevant if the overall impression remains one of substantial or significant similarity. That is, the focus will change from considering what are the differences between two designs to what are the similarities.
The infringement test will be consistent with the definition of distinctive. If another design is used that is substantially similar in overall impression to a registered design, that use will be an infringement.
This infringement test is designed to be clear and simple and for the design rights to be stronger and more readily enforceable.
The prior art base will be expanded under the new Act. Under the new designs system, design registrations will continue to be assessed against designs used previously in Australia but expanded to include those that have been published anywhere in the world.
Clearer definitions for terms such as: ‘design’, ‘product’, ‘visual feature’, ‘complex product’, ‘prior art base’ have been set out in the Act. To view these definitions, visit – http://scaleplus.law.gov.au/html/pasteact/3/3632/0/PA000110.htm
Better enforcement and dispute resolution procedures
A design owner may only take action to enforce their registered design if a certificate of examination has been issued. The registered owner can request examination of a registered design at any time.
If, following examination of a registered design, the Registrar of Designs finds that the design meets all the requirements of the legislation then a Certificate of Examination will be issued and the design will remain on the Register.
If the Registrar finds that the design is not eligible for registration, if it is too similar to a pre-existing registered design then it will be removed from the Register and the design will be without protection.
Third parties will be able to request examination of registered designs and provide any information relevant to the validity of the design registration. The Registrar can also initiate examination where the circumstance warrants.
Converting your application
If you have lodged your design application under the old Act, but it has not been finalised – how will you be affected?
For applications lodged before 17 June 2004, there is a provision for these applications to be converted to the new Act. Where applications have been lodged under the old Act, but have not been completed, they will continue to be handled under the Designs Act 1906, unless the applicant chooses to ‘convert’ the application for completion under the new Act.
Requests for conversion must be made before the old Act application is registered or the application lapses, is refused or withdrawn – whichever is first. There are no fees to convert applications
A converted application will retain its original filing and priority dates. It will also be taken to have met the minimum filing requirements, be taken to be a request for registration of all designs in the application and will have a new Act term of ten years from the date of conversion request. To request a conversion, contact IP Australia on 1300 651 010.
The improvements to the new Act should considerably assist designers in obtaining design registration and in turn, allow greater protection and reduced chance of infringement.
For further details on the new Act, visit the IP Australia website, www.ipaustralia.gov.au. The Act itself can be viewed in full at www.ipaustralia.gov.au/new_designs/index.shtml.
Who can help?
Intellectual property professionals can provide valuable assistance. See your local Yellow Pages Directory or visit IP Australia’s website www.ipaustralia.gov.au for a comprehensive list of IP professionals.
Note: Information provided in this article is of a general nature. You should contact an IP professional for expert advice and assistance.