Saving grace in changes to the Designs Act

27 September 2021

Forthcoming changes to the Designs Act 2003 (Cth) will provide greater opportunities for designers to protect their novel designs.

Design registrations establish rights in the visual appearance of products, such as unique shapes, colours, patterns, ornamentations and configurations. Designs can relate to all manner of products, from clothing and furniture to mechanical components and chocolate bars.

The Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 recently passed Parliament and received royal assent on 10 September 2021. The bill addresses some of the recommendations made by the former Advisory Council on Intellectual Property back in 2015. IP Australia has announced the amendments are due to come into effect on 10 March 2022. The main change is the introduction of a new grace period.

Currently, an application to register any new design must be filed before the design is made available to the public. Designers must keep it secret until the application has been filed, otherwise they may forfeit exclusive rights in the registered design. This is because the design will not be certified unless it is considered new and distinctive compared to the ‘prior art’ that was known to the world as at the filing date. If the designer or owner of the design sells the product, displays it marketing materials or otherwise makes it available to the public before the filing date, such use will generally form part of the prior art with the result that the design registration will be unenforceable. This limits the ability to conduct market research and product testing before deciding whether to seek design registration.

The amendments introduce a 12-month grace period, allowing the designer or registered owner to use and publish a design up to 12 months before filing an application to register it, bringing designs in line with the grace period already in place for patents. However, this will only come into effect on 10 March 2022, so any use of publication of a design before this date will still be considered part of the ‘prior art’ and may invalidate a subsequent design application, even if the application is filed after the amendments commence. Further, the registered design will not be enforceable against third parties who takes certain steps to use the design before the filing date, so it will still be in the owner’s interests to file their application to register a design as soon as possible.

Other changes include:

  • It will no longer be possible to file an application requesting a design only be published without being registered. Designs will now automatically be registered, subject to formalities checks, even if registration is not requested at the time of timing. Examination will still remain optional and may be requested by the applicant at the time of filing or at a later date, or may be requested by a third party. Examination is necessary for IP Australia to determine whether the design meets the newness and distinctiveness requirements in order for the design to be certified, otherwise rights in the design will not be enforceable against infringers.
  • Introducing a right for exclusive licensees to bring actions for design infringement against third parties. This is comparable with other forms of intellectual property. Giving exclusive licensees standing to take such action recognises the harm they suffer from infringement and will allow them to fully enforce their rights when the registered owner may not be motivated to take enforcement action themselves.

HWL Ebsworth assists clients in registering designs in addition to other forms of intellectual property. Ask a member of our team how we can help protect your novel creations.

This article was written by Nicholas Pullen, Partner, and Scott La Rocca, Senior Associate.

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