In brief

• The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) (Act) received royal assent on 10 September 2021.
• The Act introduces key changes to design law in Australia, including the introduction of a 12 month grace period to protect applicants who use or publish their design before filing.
• The majority of the amendments commence on 10 March 2022.
• These changes, which allow the registered design system to better support designers and encourage design innovation in Australia, will be a welcomed improvement for device makers and health product designers looking to bolster their intellectual property portfolios with protection for the visual appearance of their products.

Important updates

12-month grace period

Currently, designers who publish their design before filing a design application forfeit their right to obtain a design registration, as the prior publication of the design would form part of the prior art base and render the design not new and distinctive.

The introduction of a 12-month grace period allows design applicants to file a design application within 12 months of use or publication of the design, without affecting the validity of the design application. The disclosures of the design which can be relied upon under the grace period provisions are disclosures by the designer or registered design owner or its predecessor in title, an authorised party (such as a marketing company) or any other party who derived or obtained the design from the designer.

This change brings design law into line with the grace period already in place in Australia for patents. It allows designers to test their designs in the market before incurring the expense of acquiring design registration before the products are industrially applied.

Infringement exemption for prior use

Following from the introduction of a grace period, the Act will introduce a new defence to infringement for third parties who start to use a design before the priority date of the registered design. The defence continues to apply after the design has been filed, so that the third party can continue the use of the design after it is registered without infringing it.

Designers should be aware that while the new 12-month grace period provides an important ‘safety net’, it will remain best practice to file a design application as soon as possible, to prevent third parties from being able to rely on this defence.

Innocent infringement defence

Currently, the Designs Act provides for a defence to innocent infringers who were not aware that the design was registered at the time they engaged in the infringing activities and had taken reasonable steps to ascertain whether the design was registered.

The Act will broaden the scope of innocent infringer defence to include the period between the filing date of a design application and the date of registration (approximately six months) in which the design is not published on the register or available for the public to search.

Where the defence is available, a court will now have the discretion to refuse to award damages, reduce damages or refuse to award an account of profits.

Right of exclusive licensee to bring infringement proceedings

An exclusive licensee who has licensed all the rights to a design in Australia will now have the standing to commence infringement proceedings and enforce their rights. If an exclusive licensee commences infringement proceedings, the licensee must make the registered owner of the design a defendant in the proceedings unless the registered owner is joined as a plaintiff.

This change brings the rights of an exclusive licensee of a registered design into line with the rights of exclusive licensees of patents, trademarks and plant breeder’s rights.

Removal of publication option

Currently, a design applicant can elect to either publish or register the design within six months of the filing date. If the applicant fails to do so, the application lapses. The purpose of the publication option was to enable the design to be included in the prior art base without obtaining any registered design protection in respect of the product.

The Act dispenses with this option so that if registration is not requested at the time of filing or within six months of the filing date, the application will automatically become registered if all formalities have been met.

Key takeaways

IP protection for aspects of visual appearance can be a valuable asset, either in combination with patent protection or as a stand-alone right. These amendments are a welcome update to design law in Australia and should streamline the design application process, clarify the law and bring the Australian position more into line with other jurisdictions, including the European Union and the United States.

These amendments are but one suite of reforms flowing from the 2019-2020 review of Australia’s design ecosystem. Further work is being done to explore the potential for iterative design protection, protection for non-physical or virtual products and product parts and how to address a level of confusion with the two-step process for securing and enforcing design rights. We expect further reforms to be announced in the coming years.