3 Interesting Changes to the Designs Act
Changes to the Designs Act (2003) in 2021 have recently taken effect. The Designs Act governs the registration of designs in Australia and was enacted with the purpose of providing designers with an efficient and simple framework for the registration of their designs. The Act refers to ‘design’ as the overall appearance of a product comprised of one or more visual features and only provides protection of these aspects.
To be eligible for registration under the Act, a design must pass a two-step threshold test. This requires a design to be both ‘new’, meaning it must not be identical to any design previously disclosed anywhere globally, and ‘distinctive’, meaning it must not be substantially similar in overall impression to any design previously disclosed globally.
The changes were made in the hope of assisting designers by providing more flexibility in the early stages of their business. The Director of IP Australia said the changes were made to reflect the progression of and the renewed focus on creating a more accessible intellectual property system in Australia.
Among the amendments are the introduction of a grace period for registration, the introduction of a prior use defence and clarification of the standard applied when considering a designs registration and potential infringements.
Introduction of Grace Period:
The change that will perhaps have the most significant impact upon start-ups and young Australian businesses is the introduction of a grace period. The Amending Act will introduce a grace period of 12-months. This will offer protection to designers who may inadvertently disclose their design before filing for design protection without the publication affecting validity.
This grace period came into effect on 10 March 2022. It is important to note that this protection will only apply to applications filed on or after this date and only in reference to disclosure of the same effect. Also, designers should keep in mind that it is still in their best interest to register a design as soon as practically possible as the registered design will not be enforceable against third parties who take steps to use the design before the date of filing.
This change will bring designs in line with the grace period granted for patents.
Prior Use Defence:
In response to the introduction of the 12-month grace period, the amendments introduced a prior use infringement exemption under section 71A of the Designs Act. The section provides that third parties will not infringe upon a registered design, with minor exceptions, which has a priority date on or after 10 March 2022 if that party initiated use of the registered design before its priority date. This exemption continues to apply post filing of the design and therefore, in spite of the 12-month grace period, it is best for designers to file for registration as soon as possible.
Informed users and Familiar Persons:
The other key change in the Designs Act is the clarification of the standard required when establishing registrability or infringement of designs.
Prior to the amendments, the standard required was that of an ‘informed user’. This meant that in assessing substantial similarity in overall impression the examiner or court was required to adopt the perspective and knowledge of a ‘user’ of the product or design in question or products and designs of a similar nature.
This was clarified in the amendments to instead apply the standard of a ‘familiar person’, meaning that the standard of a person who is familiar with the product in which the design relates to, or similar products, specifying this is to be applied whether or not the ‘familiar person’ is a user of that product or similar products.
Designs filed prior to 11 September 2021 will be assessed with reference to the ‘informed user’ standard and designs filed on or after 11 September 2021 will be assessed against the amended ‘familiar person’ standard.