Design is everywhere. It is an essential part of the fabric of the buildings that surround us; the furniture, appliances and utensils we use, and even the hose we water the garden with.

Innovative design can play a key part in making a product commercially successful. If a product is well designed it immediately has an edge over its competitors. This is why it is important to protect designs by way of registration.

A registered design protects the overall appearance of a product including visual features such as shape, configuration, pattern and ornamentation, and that can provide the product with a unique appearance.

A registered design does not protect the materials from which the product is made, or how the product works.

The new Australian Design Act 2003, ‘the new law’, came into force on in June 2004. The Australian government suggested that the new law would offer IP owners a more streamlined registration system for designs, better enforcement and dispute resolution processes, stricter eligibility and infringement tests and clearer definitions.

Some of these promises will have to wait testing in the courts.

The overhauling of the previous designs legislation, ‘the old law; was justified on the basis that the Australian Government was concerned the old law no longer provided effective protection for designs.

A major aim of the new law was to give innovative design stronger protection from imitation. But is this new law all it’s cracked up to be?

For example, under the new law, for a design to be valid and enforceable it must be new and distinctive. A design is considered new if it hasn’t previously been published anywhere in the world and is considered distinctive if it is not “substantially similar in overall impression” to other designs.

This is a higher threshold then the old law. In addition, the new law now travels beyond Australian borders, with the validity of designs to be tested against other designs published anywhere in the world.

What does the new law give in return? When determining if an imitation infringes a registered design, the new law applies the same test for distinctiveness in reverse – an imitation is one that is substantially similar in overall impression to the registered design.

However, what this means is that a designer will only get the benefit of stronger protection if firstly their new design is itself distinctive.

At least the new law has improved the infringement test to specify that, when making the comparison between an imitation and the registered design, more weight is to be given to similarities than to differences.

For example if a registered design has a striking visual feature and a third party copies that feature, but changes many or all other features (in an attempt to avoid infringement) then that third party should still infringe under the new law. Hopefully this improved infringement test will be implemented by the courts.

Further, in return for offering this stronger protection, the new law has also reduced the term of protection from sixteen years to ten years, a move that contradicts other major jurisdictions and which must be questionable given the higher threshold distinctiveness test.

The promise of a streamlined registration process is, as yet, not being realised. The new law was intended to allow IP owners to file an application with one design, or a single design that relates to many products, or to multiple designs (within the same classification).

This was to eliminate the unsatisfactory possibility under the old law that even minor alterations were held to be a new design. In practice, whilst multiple designs can be filed in a single application, the Australian Designs Office charges the same (increased) fee for each design in the application and allocates a design number to each design.

For an owner there is thus no administrative simplification and certainly no cost reduction.

The only way in which the registration process is more ‘streamlined’ is that the previous practice of automatic examination prior to registration has now been eliminated (under the new law registration is now automatic once certain ‘formalities’ have been complied with).

However, without examination an owner cannot be certain that its design is in any way valid, and to enforce its registration an owner must now request separate examination (so-called ‘certification’) with separate increased fees and time delays.

In terms of government fees, both the registration and examination fees have escalated. Under the old law an applicant received ‘two for the price of one’, with examination and registration costing a mere $90 in government fees.

Now separate fees apply, with a $200 registration fee alone for each design and an additional charge of $360 for examination of each design. It also remains to be seen whether the new examination procedure will be any more comprehensive than previously.

Another surprising development is that a powerful aspect of the old law regarding the protection of spare parts has in the new law now been made obsolete. With the new law registered designs for spare parts can be protected but cannot be enforced.

It can
only be assumed that this is an attempt to stop global competitors monopolising the trade of spare parts for complex products, such as cars, and to encourage the production of cheaper (eg. Australian made) parts.

It has been argued that this in fact could reduce the quality of spare parts but proponents of the new law then argue that the consumer will ultimately decide such issues.

In summary, the new law purports to provide easier and more effective ways of protecting industrial designs. It has been hailed as “a new Designs Act for a new era.”

Nevertheless, with the higher threshold for enforceability, manufacturers and designers may in fact be getting effectively the same protection with a shorter term, and be paying more for it, with no certainty once registration has been obtained. It is hoped that the stricter infringement test, if applied by the courts, will offer some compensation.  


 

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