When, in May of 2012, the Advisory Council on Intellectual Property (ACIP) was set the mammoth task, the Australian designs system had been operating without review since its inception, some 8 years prior.
This, it was decided, was too long. A review must be conducted, stat!
And so, a few months shy of 8 years later, after countless issues papers, roundtables, draft reports and recommendations—after multiple changes of Government—IP Australia has commenced consultation. In 2016, the Australian government had published its response to the three year long ACIP Review of the Designs System, which culminated in a Final report released in May 2015. The current Australian designs system has been in operation since the commencement of the Designs Act on 17 June 2004.
IP Australia is now seeking feedback on three key topics before consultation closes on 20 December 2019:
- Examining the scope of design protection
- Early flexibility for designers
- Simplifying and clarifying the designs system
From the outset, the stated aim of the review was to ensure that the designs system is still meeting its original policy objective: to provide designers with a simple and efficient framework through which they can register and protect their designs.
A refresh on the re-Design
A 2005 issues paper foreshadowed some of the areas of concern addressed in the present review (being harmonisation with international practices, the introduction of a grace period and, inevitably, fees), to which the following areas of concern were added:
- duration of design protection,
- Statement of Newness and Distinctiveness,
- Unregistered Design Rights,
- border protection measures,
- overlap with other intellectual property rights,
- thresholds of registrability,
- confusion regarding the registration/publication/examination process and
- the potential impact of new technologies on the existing system.
In March 2015, ACIP made 23 recommendations addressing these concerns.
The Government’s response to ACIP’s recommendations has been broadly receptive, refusing to accept only one (recommendation 16). The other 22 it accepted wholly, in principle (recommendations 11 and 15), with certain provisos (recommendation 18) or simply noted (recommendations 6, 7, 8 and 9).
(Recommendations 1, 2, 3, 4, 5, 10, 12, 13, 14, 17, 19, 20, 21, 22 and 23)
Recommendations 1, 2 and 3 spruiked better alignment with international design laws, with harmonisation the notional goal. In accepting these recommendations, the Government committed to encourage harmonisation generally, but also specifically, agreeing to investigate the implications of joining the Hague Agreement and to “continue its active involvement in promoting harmonisation… through the development of the Designs Law Treaty”. Recommendations 4 and 5 sought to improve the clarity of the status of rights by changing the terminology for registered (but uncertified) designs, and by removing the option of publication without registration.
Recommendations 10, 14, 17, 20 and 21 lobbied for stasis: in the requirement of distinctiveness, in the present trade mark/design overlap, as relates to the infringement of designs, as relates to the Repair Defence and in response to 3D printing and scanning technologies, respectively. The Government agreed. Similarly, the recommendation that the Government not introduce protection for unregistered designs (22) was accepted.
Recommendation 12, which proposed a grace period of 6 months before the filing date, together with a prior user defence, was also accepted.
There was some tension between the two arms of recommendation 13 – that the requirement that protection relates to the visual appearance of the whole product be retained, and that consideration be given to allowing partial product registrations – however both were accepted. And though it stopped short of attaching a proviso, the Government did note the need for “detailed analysis of the costs and benefits” of extending protection to partial product designs.
The Government was happy to reconsider the treatment of virtual or non-physical designs, as per recommendation 14, a recommendation that includes considering the product in an active state not just a resting state.
Accepted in principle (11 and 15)
Recommendations 11 and 15 both sought defined change—that Statements of Newness and Distinctiveness be allowed to be amended up to certification, and that s 18 of the Designs Act 2003 be made consistent with the overlap provisions of the Copyright Act 1968.
The Government, though receptive, tempered its response, agreeing to the former provided that such an amendment not broaden the scope of a design owner’s right, and the latter provided IP Australia and the Department of Communications and the Arts (who administer the two Acts) satisfy themselves that consistency is achievable.
Accepted with proviso (18)
Recommendation 18 contained 9 sub-recommendations addressing specific legislative changes which sought to improve both the domestic operation of the designs system and its consistency with other IP systems.
The Government noted that legislation addressing some of these issues is forthcoming, and that other issues will be considered against Australia’s obligations as signatory to various international treaties and conventions.
‘Noted’ (6, 7, 8 and 9)
No response was made to recommendations 6, 7 and 8, which dealt with deadlines for requesting examination, the introduction of a system of opposition and various aspects of multiple-design applications.
This, it was said, would flow from the outcome of the Government’s consideration as to whether to join the Hague Convention, and from any relevant takeaways from IP Australia’s current fee review. Similarly, recommendation 9 (that publication occur automatically 6 months after filing) was noted, as was its potential for bringing about “unintended consequences”.
The Government did not accept recommendation 16, which sought to introduce border protection measures similar to those in the Trade Marks and Copyright Acts to allow for the seizure of alleged design infringements. In an uncharacteristic turn, the Australian Border Force appeared reluctant to expand its remit, and the Government rejected the recommendation, citing costs and practical difficulties.
So the vectors of potential change to the Australian designs system are gaining some definition, and the first of these may well be in Bill form soon. But fans of the review process need not despair—as part of the Government’s response, another call for submissions was made.
IP Australia begins consultation on accepted recommendations
IP Australia, who responsible for administration of registered rights in the Australian framework, are now seeking views on policy issues that would implement accepted recommendations. IP Australia is also “undertaking a more holistic review of the designs ecosystem, as part of the Designs Review Project.
Designs is a complex area of law, often untested in the Courts. The designs system protects the visual features (patterns, shapes, ornamentation, configuration) that give a product its unique appearance. It does not protect functionality. Designers, in all contexts, should now consider how the accepted recommendations might affect their artistic or commercial practice – and where appropriate, provide input to IP Australia.