Designs Act 2003
The new Designs Act 2003 came into force on 17 June 2004, repealing the Designs Act of 1906. The new Act is the result of a thorough review and overhaul of the current Act, aiming to provide a stronger IP right for new and distinctive designs.
As under the 1906 Act, the new Act still provides protection for the shape, configuration, pattern and/or ornamentation of a product (known as an article under the current Act), but differs significantly in several key areas. These areas include the introduction of:
Term of Registration
Under the old Act, the term of registration is 16 years from the date the application is filed. Under the new Act this term will be reduced to 10 years. Whilst the term is rumored to be reviewed, and possibly increased to 16 years, it does represent a departure from the trend over the past decade to increase the period of IP rights.
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Registrability
Under the old Act, a design was deemed registrable if it was new or original when compared to a prior art base consisting of documents published in Australia, or acts in Australia which publicly disclosed the design. This test, and the uncertain definition of original, resulted in very few designs being considered unregistrable.
Under the new Act a design must be new and distinctive when compared to a prior art base consisting of published documents anywhere in the world, and acts in Australia which publicly disclosed the design. This expansion in the prior art base may, however, represent a minimal broadening of the prior art base owing to the availability in Australia of documents over the Internet.
A new design will be considered to be new if it is not identical to another design, and distinctive if it is not similar in overall impression to another design which forms part of the prior art base. When assessing whether a design is distinctive, it will be necessary to compare similar features rather than analyse those features which are not the same, as is the case under the current Act. Hence, greater weight will be given to the similarities between the design and designs of the prior art base when considering registrability. We believe that the introduction of the requirement for a design to be distinctive, as well as new, will have a marked effect on what can and cannot be validly registered.
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Infringement
Under the old Act, a party would infringe a registered design if they were found to have obviously or fraudulently imitated the registered design. Owing to the interpretation of this test, it has proved very difficult for an owner of a registered design to be successful in an action of infringement. It was apparent that, in most cases, unless the alleged infringing design was virtually, or exactly the same as the registered design, the owner could not enforce any right. As a result, the value of a registered design under the old Act has been greatly diminished.
The new Act introduces a new test for infringement which will theoretically enable owners of a registered design to ‘cast a bigger net’ when considering whether a design of a third party infringes their registered design. This new test is the same as that for registrability, in that a design of a third party having an overall impression similar to that of a registered design will be considered to be an infringement of that design. This new test is introduced to provide a stronger intellectual property right which will be easier to enforce.
The application and interpretation of the tests for registrability and infringement, endeavor to overcome some of the deficiencies in the old Act, and provide a more valuable right.
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Process for Registration
The previous process for design registration required a design application to be examined and any objections overcome before it was registered.
Under the new Act, a design application will only undergo a formalities check before it is registered. However, a design registered under the new Act will require examination before the owner has any rights which may be enforced. Once the application has been examined, and any objections overcome, a Certificate of Examination is issued. This certification will then provide the owner with rights which may be enforced. Similarly, if the design registration was to be challenged it must first be examined before the challenge can be considered.
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Spare Parts Defence
Under the new Act, the manufacture of a ‘spare part’ which is used to:
- repair a complex product, and
- restore the complex product to part or all of its overall appearance,
will not be seen as an infringement of a registered design.
The definition of a complex product is:
- any product which comprises two or more replaceable component parts, and which may be disassembled and reassembled.
If the owner believes a spare parts manufacturer is infringing, the new Act places the onus on the owner of that design to prove that the alleged infringer knew, or ought to have known, that the use of the design was not for the purpose of repairing the product.
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One or more designs
Under the old Act, design registration is only available to one design or one design applied to a set of products (e.g. pattern applied to cutlery).
Under the new Act it will also be possible to register in a single application more than one design in relation to the one product, or multiple designs in relation to more than one product, where those products belong to the same class as denoted by the Locarno Agreement (classification of designs).
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Transitional Period
An applicant of a design application pending on 17 June 2004, will be able to choose whether they will pursue design protection under the current Act, or convert the application and pursue registration under the new Act. In deciding which Act will most suit your needs, one must bear in mind the significant differences between the two Acts and consider their design in light of the ramifications these changes will bear.
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Conclusion
We believe the new Act will provide a more valuable right to parties wishing to protect their new and distinctive designs. It will be interesting to gauge how valuable these rights will be once the new law is applied and interpreted in practice.
For further information please contact us.
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