CTH Bill to Amend Australia's Registered Designs System

On 2 December 2020, the Federal Minister for Employment, Skills, Small and Family Business, Senator Michaelia Cash, introduced the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Cth) (“the Bill”) into the Senate.

The Bill seeks to make amendments to the Designs Act 2003 (Cth) (“the Act”) in order to improve on the registered designs system. The Bill is part of the Government’s response to the recommendations given by the former Advisory Council on Intellectual Property (“ACIP”). The Bill is yet to pass the upper house.

The ACIP Review

In May 2012, then Parliamentary Secretary to the Minister of Industry and Innovation, Mark Dreyfus, requested ACIP to review the Australian designs system. Part of its investigations was to consider the effectiveness of the system in stimulating innovation by Australians and its effects on economic growth. Details of ACIP’s Review of the Designs System (“the Review”) were discussed in an earlier TimeBase article, and the Review’s option paper was discussed in another TimeBase article.

The Review’s final report was released in March 2015, and found that overall there was a need to align the Australian design system with international practices and treaties in order to maximise benefit to users and ensure streamlined administration for the government. In order to achieve this, ACIP put forward 23 recommendations in its final report, including:

• Amendment of the terminology for a registered but uncertified design to clarify that until certification, a design does not confer enforceable rights (recommendation 4)
• Introduction of a requirement for a request for examination of designs by its first renewal deadline and allowing for a system of opposition following certification (recommendations 6 and 7)
• Introduction of a six month grace period prior to the filing date, along with a prior user defence (recommendation 12)
• Reconsideration of the treatment of virtual or non-physical designs (recommendation 14)

On 6 May 2016, the Government responded to the Review’s final report and agreed to a majority of its recommendations. The Bill seeks to give effect to several recommendations as well as making other improvements on the designs system.

Amendments under the Bill

The Bill seeks to improve on Australia’s design legislation so it can better achieve its objectives to support innovation and help Australian businesses benefit from their designs. Mainly, the amendments propose changes that will provide more flexibility in the early stages of registering a design for protection and make a number of technical changes in order to simplify and clarify aspects of the designs system.

One key amendment under the Bill is the implementation of a grace period to protect designers. Under the current Act, designers who publicly disclose a design prior to applying for protection cannot later gain intellectual property rights. Schedule 1 of the Bill contains amendments that seek to introduce a 12 month grace period when by designers can apply for protection after publicly using their design. This amendment seeks to protect the rights of designers in case of accidental publication or lack of experience with the design system. This amendment will also align Australia’s design protection practices with international design protections.

The Bill will also introduce a prior use exemption to the infringement of designs. Third parties that use a publicly disclosed design during the grace period will be safeguarded from infringement proceedings if they started using the design prior to registration of the design. This ensures that innocent third parties are not liable during a time when it is unknown to them that a designer intends to seek intellectual property protection.

Other amendments proposed by the Bill include:

• Allowing businesses who license exclusive rights for a design to bring infringement action against another party, without having to rely on the owner of the design
• Removing the option to publish a design application without registration
• Extension of the current innocent infringer defence to allow relief from any time after the design’s filing date

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Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Cth) and supporting documents available from TimeBase's LawOne Service

Review of the Designs System (IP Australia, 2 December 2020)