In May 2012 a review of the Australian designs system was requested.
Australia’s Advisory Council on Intellectual Property (ACIP) has been conducting this review and on 3 December 2014 released an Options Paper for public consultation. Submissions are invited, with a closing date of 23 January 2015.
The review was requested by the Parliamentary Secretary for Industry and Innovation with the following terms of reference:
Inquire, report and make recommendations to the Australian Government on the operation and effectiveness of the Designs Act 2003 in supporting innovation, having regard to:
- any new opportunities for enhancing the Act’s effectiveness and efficiency; and
- any deficiencies and unintended consequences arising from the Act’s implementation.
ACIP conducted an investigation and in September 2013 released an Issues Paper seeking views on major issues relevant to the terms of reference. The Options Paper was then published on 3 December 2014.
THE OPTIONS PAPER
In the Options Paper ACIP sets forth three broad options:
- considering minor changes to Australia’s design legislation to address specific issues without revisiting the policy decisions underpinning Australia’s current Designs Act;
- considering amendments to bring Australian law into line with the law of its major trading parties;
- conducting a wholesale revision of Australia’s design system and the underpinning policies.
In the Options Paper ACIP discusses these options, the submissions to date, and its recommendations with respect to the various specific issues considered.
Section 4 of the Options Paper deals with the question of whether or not the current Designs Act is operating as intended. This section largely focuses on procedural aspects of Australian law such as Australia’s registration/certification system, “statement of newness and distinctiveness”, handling of copyright/design overlap, and current “spare parts exemption” to infringement.
Although this section of the paper is not the focus of this article, one key finding that may be of interest to applicants, is ACIP’s acknowledged the current fee schedule for multiple designs acts as a disincentive, and a substantial fee decrease for multiple designs would encourage applicants to protect multiple embodiments of a product.
Section 5 of the Paper analyses several policy considerations which are likely to be of broader interest. A brief overview of these policy considerations follows.
Many submissions and attendees at the roundtable sessions supported moves towards international harmonisation. The Hague Agreement Concerning the International Registration of Industrial Designs (“Hague Agreement”) (of which Australia is not currently a member) and the Draft Designs Law Treaty currently under consideration by Member States of the World Intellectual Property Organization (WIPO) provide the context for which international harmonisation is provided. If Australia were to join the Hague Agreement or the Designs Law Treaty, some changes would be required to meet minimum requirements set by those agreements.
The main concerns raised by ACIP were the fact that Australia would need to extend the term of protection currently offered to designs and whether or not the single international application process offered by the system would actually be used. The latter consideration focussed largely on the practicalities of filing an international application, and in particular the difficulties in filing representations satisfying the requirements of different jurisdictions.
On the other hand ACIP recognised that joining the Hague Agreement is consistent with Australia’s international treaty commitments and would provide Australia with an opportunity to actively work on improving harmonisation.
In trying to balance the considerations ACIP did not reach a conclusive view on whether the benefits of joining the Hague Agreement currently warrant the requirement to extend the maximum term of protection.
Term of protection
Introduction of Australia’s current Designs Act reduced the term of protection from 16 years to 10 years. Submissions received during the review process and discussions at the roundtable sessions strongly supported increasing the term to 15 years.
ACIP looked for empirical evidence as to whether an increased term was warranted, and noted that only 20% of owners under the previous Designs Act extended the design to the third term (from 10 years to 16 years). Based on this ACIP is of the view that it is difficult to support a recommendation for increasing the maximum term to 15 years.
In the event that Australia joins the Hague Agreement an increase in the term to a minimum of 15 years would be required.
ACIP also supported a suggestion made in submissions that if the term was extended, that the additional 5 years of protection should only be available for those designs that have been certified.
Public disclosure of a design before first filing a design application will prevent an applicant from obtaining valid design protection in Australia. A grace period is a defined time period in which the applicant’s own earlier public disclosure does not invalidate their later design registration.
The majority of respondents to a survey of users of the designs system conducted by ACIP indicated that they had at some point inadvertently disclosed a design to the public before filing for protection. Submission also noted that the introduction of the grace period would benefit overseas applicants who rely on a grace period in their own jurisdiction.
ACIP supports the introduction of a grace period of 6 months, and notes that if Australia joins the Designs Law Treaty (and that Treaty stays in its current form) Australia will be required to introduce at least a 6 month grace period in any event.
Australia’s current system results in publication of a design soon after it is registered. Deferred publication is available in some other jurisdictions.
The results of ACIP’s survey indicate that a period for market testing prior to publication would be desirable to applicants. The introduction of a period of deferment of publication was supported by the majority of respondents, with many advising that a pseudo-deferment was already regularly used by parties by ensuring non-compliance with formalities to delay registration and hence publication.
The deferral of publication for up to 6 months was supported by ACIP. If Australia joins the Designs Law Treaty (and it stays in its current form) it will be required to introduce a minimum deferment of publication period of 6 months.
Under Australia’s current law validity and infringement are based on a test of whether two designs are substantially similar in overall impression to one another. Furthermore, in order to be protectable a design must be in relation to a product - essentially something manufactured as an integral whole.
When combined, these two requirements make it very difficult to try and protect a specific/isolated part of a product where that part is integral to the whole product. E.g. protecting only the appearance of a tea-cup handle when that handle is integral to the cup as a whole. In this respect Australia is out of line with other major jurisdictions, such as the US, Europe, and Japan.
In the review process submissions were made that being able to protect partial designs is desirable. Despite these submissions, and the apparent absence of any submissions opposing the ability to protect parts of products, ACIP states in the Options Paper that it “is not yet convinced that broader protection [by allowing partial designs to be protected] is warranted”.
Graphical User Interface Designs
The review leading up to Australia’s current Designs Act culminated in the Australian Law Reform Commission Report No. 74 (tabled in Parliament in August 1995). That review considered whether or not designs should be available to protect “screen displays” – e.g. Graphical User Interfaces, Icons and the like.
The recommendation from that 1995 paper was that screen displays should not be protected as designs. Although this recommendation was accepted by the Government, no express prohibition was included in the current Designs Act and many design applications directed, in essence, to screen displays have been filed under the current Act.
In reconsidering this issue ACIP has recognised that technology has advanced significantly since 1995 and appears to be in favour of providing some protection for screen display designs.
Border Protection Measures
Unlike copyright and trade marks, Australia does not currently provide any border protection measures for designs.
Many submissions to the review process favoured introducing border protection measures for designs. Australian Customs, however (who would be responsible for enforcing such measures) expressed a concern at the level of expertise that would be necessary to properly identify design infringements.
ACIP’s recommendation in this regard was that border protection measures may be appropriate, but should perhaps be limited to cases where an incoming product is identical to a registered design. This relieves Customs from having to make an assessment on whether a product is “substantially similar in overall impression” to a registered design (the other infringement limb of Australia’s current law).
ACIP also recommended that if the designs regime is extended to allow for partial design protection it would be more reluctant to recommend border protection measures (on the basis that identifying infringement would become more complex).
Unregistered Design Rights
Australia does not currently have an Unregistered Design Right (UDR) regime. As part of the review ACIP asked for submissions on the benefits and implications of introducing such a regime in Australia.
There was both support and opposition to implementing an UDR regime in Australia, and on balance ACIP formed the view that an UDR should not be introduced.
3D Printing and Design Protection
Under this heading ACIP considered whether the current Designs regime is equipped to deal with 3D printing.
In short, ACIP’s recommendation was that no reform was currently recommended.
Further submissions can be made to ACIP by 23 January 2015. Following these submissions ACIP will report to the Government – which it currently aims to do in March 2015.