Important changes to Australia’s Designs Act 2003 have now come into effect – so what do designers need to be aware of? Anthony Selleck sets out what you need to know about the changed landscape for registered designs in Australia.

Overview

Recently enacted[1] changes to the Designs Act 2003 came into force on 10 March 2022. Applications for registered design protection filed on or after this date are governed by the amended Act.

The key changes implemented by the amending legislation relate to:

  • a grace period;
  • a prior use defence;
  • protection for “innocent infringement”; and
  • reforms to the application procedure.

Grace Period

A 12-month grace period now applies to registered design applications filed on or after 10 March 2022. Using the grace period, registered design applicants can, to a certain extent, recover from a self-publication of the design the subject of the application. In this regard, the grace period operates to remove a publication or use of a design from the design’s prior art base, so long as the publication or use occurred:

  • on or after 10 March 2022; and
  • no more than 12 months before the design’s priority date.

The grace period only applies to a registered owner’s own publication or use of the design, or a publication or use made by a predecessor-in-title of the registered owner, or by a person who created the design (if that person is not the registered owner or a predecessor-in-title). Like the grace period for patent applications in Australia, the designs grace period does not provide an applicant with an earlier priority date.

Importantly, the grace period does not operate to disregard a publication of a design by a foreign designs office. In practice, this means that the grace period cannot be used as a filing strategy where a Convention priority deadline is missed and the application is published by the foreign designs office before the Australian application is filed. In these circumstances, an applicant would need to establish grounds for an extension of time in which to file the Convention application in Australia, such as a genuine error or omission on the part of the applicant or their attorney.

It is also worth noting that the grace period is subject to the new prior use defence (discussed below).

Despite its limitations, a grace period is a welcome addition to registered designs law in Australia, bringing it into line with the grace period already provided to patent applicants. The grace period should also provide clarity and increased filing options to both local and overseas applicants who inadvertently disclose their designs before filing for design protection.

Prior Use Defence

Alleged infringers of a registered design with a priority date on or after 10 March 2022 can, in certain circumstances, avail themselves of a “prior use” defence.

In particular, a design owner who relied on the grace period to secure registration of the design, cannot enforce the registration against an alleged infringer who began using the design (or a comparable design) in the period between the design owner’s disclosure of the design and the filing of the design application.

The prior use defence is a very important limitation on the grace period. To avoid third parties potentially obtaining rights to use a registered design, design owners are advised to file for protection before disclosing the design, or as soon as possible after the design is disclosed.

Innocent Infringement

For designs that become registered on or after 10 March 2022, Australian courts have discretion to refuse or reduce damages, or refuse an account of profits, for infringements occurring before the design was registered. The provisions aim to provide relief to an “innocent” infringer who infringes a design in the period after an application is filed, but before the design itself is publicly available on the Register of Designs.

To take advantage of the provisions, the “innocent” infringer must satisfy the court that they were not aware, and could not reasonably have been expected to be aware, that a design application had been filed. Conversely, it is advisable for applicants of pending design applications to publicise that an application has been filed (such as by marking relevant products with the application number), so as to reduce the likelihood of the defence applying.

Application Procedure Reforms

The Designs Act 2003 brought in a system of defensive publication, under which a person could publish a design (and thus prevent others from obtaining rights in the design) without seeking registration of the design.

As this option was sparsely used, the publication regime has been abolished from 10 March 2022 onwards, leaving only the option to seek registration of a design. Under the old regime, there was a requirement to request either publication or registration of the design within 6 months of the priority date. However, with the abolition of defensive publication, it is no longer necessary to specifically request registration. Instead, designs filed on or after 10 March 2022 will automatically proceed to a formalities check 6 months after the priority date of the application.

If desired, Applicants can file a request for the design application to proceed to formalities examination (and typically registration) before the end of the 6 month period. This may be advisable in certain circumstances, such as to reduce the risk of innocent infringement occurring before the design is registered.