An extensive three year review of Australia’s design legislation has culminated in a final report that makes a number of recommendations to enhance the current system and address deficiencies that have come to light since the current legislation commenced. Recommendations include introduction of a 6 month grace period for filing, consideration of virtual designs, and introduction of border protection measures based on certified designs. These and other key recommendations are discussed in the article that follows, and full details are set out in the official report.
In May 2012, the Australian government requested the Advisory Council on Intellectual Property (ACIP) review the current Australian designs system, to assess how well this legislation was functioning since its commencement in June 2004. The review process included extensive consultation with a wide range of stakeholders, resulting in an Issues Paper released in September 2013, followed by an Options Paper in December 2014, and finally, the Final Report released 7 May 2015. Further details of the review, prior papers and the Final Report can be accessed here.
The final report makes a total of 23 recommendations, ranging from minor changes to terminology, through to extending the subject matter that can be protected via the designs regime, and many of the recommendations include several actions. A selection of some of the more interesting proposals are summarized below.
Harmonisation and Term of Registration
Recommendation 2 proposes that Australia investigate joining the Hague Agreement and work actively through the Designs Law Treaty process to promote harmonisation of filing requirements. However, in recommendation 3 ACIP indicates that extension of the term of registration from the current 10 years isonly recommended if a decision is made to join the Hague Agreement, at which point it would be increased to 15 years.
Compulsory examination within 5 years and post certification opposition
Recommendation 6 proposes that requesting examination be compulsory before the first renewal deadline at 5 years, so as to reduce the number of unexamined applications cluttering the register and causing uncertainty. If this proposal is accepted it is also recommended that a formal system of opposition be introduced following successful examination.
Multiple design applications
Recommendation 8 supports development of the eligibility criteria of designs for inclusion in a multiple design application for consistency with relevant treaties and harmonisation, and the application of reduced fees for each additional design included in a multiple design application.
Amendment of the Statement of Newness and Distinctiveness up to the point of certification after examination
Presently these statements cannot be amended after registration, which can be problematic given the most relevant prior art often comes to light until during examination. However, this proposal as set out in recommendation 11 is quite limited, in that it specifies that the amendment must not be deemed to broaden the scope of the registration.
Grace period and prior user defence
Recommendation 12 proposes introduction of a six month grace period together with a prior user defence, but also suggests that applicants relying on this grace period be required to file a declaration to that effect.
Protection of parts of products
While recommendation 13 recommends retaining the current requirement that protection relates to the visual appearance of a whole product, which may be part of a complex product, it suggests this could be revisited when investigating harmonisation opportunities. It suggests that provided significant advantages can be shown to Australian applicants, without other adverse consequences, then protection of partial products would be supported.
Non physical or virtual designs
Recommendation 14 supports reconsideration of the treatment of these designs, by, for example, allowing consideration of the product in its active state and not just its resting state.
In recommendation 16, ACIP supports introduction of border protection measures to allow for seizure by Customs of alleged design infringements, but only those which are identical to certified designs.
Spare parts repair defence
Recommendation 20 supports retention of the current repair defence.
The report is now with the Australian government, and we await their response to find out whether some or all of these recommendations are likely to be implemented, and if so, when.
In the meantime the current Australian designs system still provides a very useful tool for protecting the unique visual appearance of articles, which may include functional features.