The following is a brief summary of the main changes to Australian
designs law introduced by the Designs Act 2003.
The Designs Act 2003 comes into force from 17 June 2004, and
applies to all applications filed from that date. Applications
filed before that date will remain subject to the scheme of
the previous designs legislation. The Applicant of an old
Act design application which has not yet been registered may
apply for conversion to the new Act.
Term of Registration
The maximum registration term of new Act design registrations
is 10 years (5 years + 5 year renewal) from the filing date,
compared to 16 years for old Act registrations. For converted
applications, the 10 year term will run from the date of the
The new Act defines a design as being the overall appearance
of a product resulting from one or more visual features of
the product. A component part of a complex product may be
protected if made separately, though will be subject to a
right of repair infringement exemption (discussed further
New Distinctiveness and Infringement Tests
The old Act tests for a "new and distinctive" design
and for infringement of a design registration were applied
narrowly by the Courts. These have been replaced by a unified
"similarity of overall impression" test to be applied
from the viewpoint of an informed user familiar with the product.
In applying the new test, more weight is to be given to similarities
than to differences and regard is to be taken of the state
of the prior art base at the priority date, any features mentioned
in a statement of newness and distinctiveness and the freedom
of the designer to innovate. If only part of the design is
similar to the prior art, regard must be had to the amount,
quality and importance of that part to the design as a whole.
The intention of the new provisions is to require a higher
standard of differentiation from the prior art before a design
may be validly registered, but to give a broader infringement
test offering greater protection to designs.
The prior art base under the new Act will be designs published
in a document anywhere in the world, or designs used, registered
or subject of a design application of earlier priority date
in Australia. Unlike the Australian Patents Act, there is
no grace period against self-disclosure, other than continuation
of the limited existing copyright/designs overlap provisions.
Single Design Application for Multiple Designs
The new Act will allow a single design application to include
multiple designs, for:
- one design in relation to one product;
- one design that is a common design in relation to more
than one product;
- more than one design in relation to one product;
- more than one design in relation to more than one product,
if each product belongs to the same Locarno Agreement class.
Unfortunately, the pricing scheme of the government fees
and complicated registration scheme - including issuing each
design of the application with a separate registration number
- will largely negate any potential benefit of filing multiple
Government fees for filing an application have more than doubled
to $200 per application, or $200 per design in a multiple
Registration without Examination
The examination scheme is similar to that for innovation patents
under the Australian Patents Act.
Whereas under the old Act design applications are examined
before registration, under the new Act design applications
will be examined for formalities upon filing of a request
for registration, which must be filed within 6 months of the
priority date. No substantive examination of validity of the
design will be carried out prior to registration, though the
registered owner of the design has the option of requesting
examination after registration. The owner cannot threaten
or commence action for infringement of the registration unless
the registration has passed examination.
If objections raised during examination are not overcome,
the design registration will be revoked. If no objection is
raised, or any objection is overcome, the Registrar will issue
a certificate of examination for the registration.
A third party may file a request for examination accompanied
by one half of the examination fee, with the other half payable
by the owner, or the Registrar may examine a design registration
of his/her own initiative. A third party may also provide
the Registrar with copies of prior art material.
The owner may request publication of the design instead of
registration. Publication will give no rights in the design,
but will merely place the design on the public record. We
do not expect that this provision will be commonly invoked.
Design infringement action may be commenced by the registered
owner through the Courts only after a certificate of examination
has been issued. Like the old Act, remedies available to the
owner against the infringer include an injunction, and either
damages or an account of profits. However the new Act also
includes provision for the Court to award additional damages
against a flagrant infringer.
As discussed above, the infringement test has been strengthened,
with the intention of giving a broader design monopoly.
A new right of repair has been introduced for a component
part of a complex product, whereby use of an otherwise infringing
component part will not infringe if used to repair the complex
product so as to restore its overall appearance. The working
and impact of the right of repair provisions will be subject
to review in the future.
HALFORD & CO.