Designs Bill 2001
In this issue: We give an overview of the Federal Government's plans for a new designs registration system for Australia.
On 4 May 2001 the Federal Government released an exposure draft of the Designs Bill 2001 (Bill) to implement a new designs registration system in Australia. The Bill is expected to be ready for introduction into Parliament later this year.
Design registration protects the visual appearance of objects. For example, obtaining design registration for the shape of a new product such as an inhaler or video-camera would, if valid, provide the designer with the exclusive right, for a prescribed period, to stop others from applying that design to inhalers or syringes (as the case may be).
However, the value of designs is significantly reduced by difficulties which exist in pursing infringers of registered designs as a consequence of present legislation (unless they are in effect exact copies).
The proposed changes to the legislation will make it harder to get a design registered once it has been examined, but should make it easier to prove infringement once the design is registered. As such, the proposals should increase the value to a business in having a registered design.
Some important amendments contained in the Bill include the following:
No examination before grant
Under the Bill, design applications will not be examined before grant. After a formalities check, the application will proceed to grant and to publication. They will be granted if the forms are correctly completed and official fees paid.
However, designs may be examined after registration on the request of any person (including the applicant) or on the Registrar's initiative. In examining a design post-grant, the Registrar must determine whether the statutory requirements such as 'novelty' and 'distinctiveness' are satisfied. If the requirements are not fulfilled, then the registered design may be revoked.
However if the Registrar decides that no case of revocation can be made out, a 'certificate of examination' will be issued to the registered design owner as prima facie evidence of the facts stated in it and of the validity of the design registration.
Importantly, a design must have been examined and a certificate of examination granted before the applicant can bring an action for infringement, or even issue a letter of demand. However, a letter of demand issued on an uncertified grant would almost certainly constitute an unjustified threat.
Although controversial, post-grant examination will speed up the grant of designs and may well limit examination to the minority, mainly those likely to be subject to litigation. On the other hand, pre-grant examination can alert a designer to design validity issues and avoid grant of designs that are clearly invalid.
Granted but unexamined designs will be of questionable value. It is conceivable that a design for a plain A4 piece of paper could be granted if the application complied with formalities and official fees paid. However, certification would certainly be refused, and the design could not be enforced. It is also worth noting that post-grant examination must be completed before action can be brought to revoke the design.
A higher threshold for valid registration
In attempting to make design registration more difficult to obtain, and to increase the presumption of validity of a design once registered, the Bill provides that a design is registrable only if it is 'new and distinctive'. A design will be 'new' unless it is 'identical' to existing designs, and it will be 'distinctive' unless it is 'substantially similar in overall impression' to existing designs.
Unlike the operation of the current legislation, the Bill specifically demands that in deciding whether a design is 'substantially similar in overall impression' to another design, more weight should be given to the similarities between the designs than to the differences between them.
A broader test for infringement
The Bill provides that a person will infringe a registered design if they deal in certain ways with a product which embodies the design, or a design that is substantially similar to it.
As with the threshold for registration, the Bill provides that in determining whether an allegedly infringing design is substantially similar in overall impression to the registered design, more weight should be given to the similarities between the designs rather than to the differences. This is a broader test for infringement than under the current legislation, and rewards those with valid registration by making it easier for the design owner to enforce the registration against someone who violates the design owner's registered rights.
Reduced term of registration
The Bill proposes to reduce the term of design registration from 16 years (under the current system) to 10 years. This is despite a recommendation in the Australian Law Reform Commission Report No 74 (1995) that registration should be for 15 years.
The 'standard of the informed user'
The Bill introduces the 'standard of the informed user' to assess 'substantial similarity and overall impression'.
Although it is important in designs law to assess the perception of the person for whom the design is intended, it is probable this will increase the cost of litigation by requiring expert evidence to ascertain the 'standard of the informed user'.
Exclusion of 'surface' from design protection
A design is the overall appearance of a product resulting from one or more visual features of the product. 'Visual feature' is defined inclusively in the Bill as 'shape, configuration, pattern or ornamentation of the product'. However 'surface' has been specifically excluded from this definition.
Designs law is concerned with protection of appearance and, therefore, protection for the look and finish of a product would seem appropriate. However, the rationale for the exclusion of 'surface' from the definition of 'visual feature' has not been explained.
As the Bill is only in draft at this stage, it is hoped that such issues will be resolved before it passes into legislation.
- Jim DwyerGeneral Counsel,
Ph: +61 2 9230 4873
- Philip KerrPartner,
Ph: +61 2 9230 4937