Introducing the grace period and other amendments 4 min read
The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) (the Amending Act) received Royal Assent on 10 September 2021.
It has introduced immediate changes to the Designs Act 2003 (Cth) (the Designs Act). Further amendments will take effect on 10 March 2022.
Key takeaways
- The standard of a 'familiar' person will now be used to assess the registrability and infringement of designs that are filed on or after 11 September 2021.
- A 12-month grace period will apply to certain publications or uses of a design that occur on or after 10 March 2022.
- A defence to infringement for prior use will apply to designs that have their priority date on or after 10 March 2022.
- Other amendments will take effect on 10 March 2022, including further protections for innocent defendants and greater rights for exclusive licensees.
Who in your organisation needs to know about this?
Designers and those responsible for publishing designs or filing design applications; legal counsel.
Overview of the Amending Act
Last year, we reported on the legislative amendments being proposed to Australia's designs system. The proposals have now been finalised in the form of the Amending Act.
Informed users and familiar persons
Design registrability and infringement largely depend on whether the design of interest is substantially similar in overall impression to another design. The Amending Act has clarified the relevant standard for those assessments by prescribing that:
- designs filed on or before 10 September 2021 will be assessed by reference to the standard of an 'informed user' (and even if the design is registered on or after 11 September 2021); and
- designs filed on or after 11 September 2021 will be assessed by reference to a person who is 'familiar' with the product or products similar to that product.
The amendment is intended to clarify Parliament's intention that the Designs Act does not require the assessment to be undertaken by someone who actually uses the product. That is, familiarity is sufficient irrespective of the manner in which familiarity of the product is acquired.
Grace period
The Amending Act will also introduce a 12-month grace period which will offer some protection to designers who inadvertently disclose their design (or a design which is substantially similar in overall impression to their design) prior to the priority date.
Subject to some exceptions, a publication or use of a design will be disregarded when assessing whether a design is new and distinctive, provided the publication or use occurred:
- on or after 10 March 2022;
- in the period of 12 months before the design's priority date; and
- by a 'relevant entity' (namely – the registered owner of the design, their predecessor in title or a person who created the design if they are not otherwise covered by the preceding descriptions).
This amendment will be particularly well received by designers in overseas jurisdictions where similar grace periods of 12 months exist.
Notably, the grace period provisions will not disregard publication of the design by a foreign designs office in circumstances where Convention priority deadline(s) have been missed. If priority deadline(s) have been missed, an extension of time (typically on the basis of demonstrating an error or omission) will be required.
Prior use defence
Despite the introduction of the 12-month grace period, it will remain best practice for designers to seek registration of a design before it is disclosed. This is principally because the Amending Act will introduce a prior use defence.
Subject to some minor exceptions, the effect of this defence will be that third parties will not infringe a registered design which has its priority date on or after 10 March 2022 if that third party began to use the registered design (or a design substantially similar in overall impression to the registered design) before the registered design's priority date (including, for example, during the grace period).
Further, the defence will continue to protect a third party from infringement claims even once a design has been registered. In light of these matters, designers should not seek to rely upon the grace period as part of their ordinary filing strategy.
Other amendments
The Amending Act will also introduce further changes, including those described below.
- The court will be empowered to refuse to order relief against an innocent defendant who infringes a design in the period between its date of filing and registration if, at the time of the infringement, the defendant was not aware (and could not reasonably have been expected to be aware) of the design application. This appears appropriate given that relief for design infringement is available for the entire term of registration, notwithstanding that the design will not be publicly available during the period between its filing date and registration. This power will apply to designs that originate from applications filed on or after 10 March 2022.
- Exclusive licensees will also obtain greater rights with respect to their licensed designs. This will include the right to bring infringement proceedings from 10 March 2022. Though this right will extend to all registered designs (irrespective of the priority or filing date of the licensed design), the right to obtain relief will be limited to conduct that occurs on or after 10 March 2022.
Actions you can take now
- Contact us today for assistance with developing a designs filing strategy and registering your designs.
- You can read further details of the amendments here.