Australia has seen its fair share of intellectual property law reform over the past few years, with the ‘Raising the Bar’ legislation1 in 2012, and major reviews of the Innovation Patent System, the Copyright system and now the Designs system. While changes from these reforms are still some time away, we can see there is a definite push to harmonise the Australian Designs System with the rest of the world.
The report2 prepared by the Australian Council on Intellectual Property (ACIP) is one of the last reports they will release. ACIP was an independent body established in 1994, which advised the Federal Minister for Industry and Science on intellectual property matters and the strategic administration of IP Australia.
IP Australia will now handle reviews of intellectual property.
At its heart, the ACIP report recommends a move towards greater harmonisation with international treaties and practice in design protection. ACIP also looked at the changes that were introduced with the Australian Designs Act 2003, the effectiveness of those changes, and how some aspects of present designs legislation could be enhanced and improved.
Twenty-three recommendations were tabled. The recommendations of note are:
- Amending the Designs Act to bring Australian designs law into better alignment with equivalent laws of major trading partners, international treaties and proposed international treaties such as the Hague Agreement and the Designs Law Treaty.
- Extending the maximum term of protection of designs from 10 years to 15 years (only if a decision is made to join the Hague Agreement).
- A proposal to refer to an Australian design that is registered but not certified (i.e. not examined) as an ‘uncertified design’. Presently, Australian designs are ‘rubber stamped’ and ‘registered’, but must be certified via an examination process before they can be enforced.
- Removing the ability to register a design and not have it certified. At present, designs may sit unexamined for their entire term unless the applicant or a third party requests examination. A recommendation to require a request for examination of the design by the first renewal deadline (five years from the filing date) is also proposed. If this recommendation is accepted, a proposal is also to have a post-certification opposition system.
- A proposal to make filing for multiple designs more cost-effective. Currently in Australia there is no cost saving in filing a single application for multiple designs – a government fee applies for each design, irrespective of whether they are in the same application or not. Consistency and harmonisation with other jurisdictions with regard to multiple designs is also proposed.
- A proposal of a six month grace period together with a prior use defence. Currently there is no grace period in Australia for designs. It is also proposed that applicants who rely on the grace period to protect the validity of their design rights should be required to file a declaration to that effect. Interestingly there is no corresponding declaration requirement in Australia’s Patent system which also has a grace period.
- Reconsider the previous recommendation to formally allow virtual or non-physical designs (such as screen displays on tablet devices and smartphones). This could be achieved by allowing consideration of the product in its active, and not just its resting state when considering validity. Presently, these types of designs are registrable (and can be certified) if a suitable statement of newness and distinctiveness is provided.
- A recommendation to replicate border protection measures that align with the Australian Trade Marks Notice of Objection Schemes so as to allow for seizure by Customs of alleged design infringements which are identical to certified designs.