Summary of the proposed Designs protection reforms in the Designs Bill 2002
Currently, Australian designs law is governed by the Designs Act 1906. Although this Act is now almost 100 years old and many changes have been made since its introduction, much of the operation of the legislation is still determined by principles incorporated within the Act when it was first introduced. These principles, in turn, are based on principles established in UK law in the 19th century.
The present legislation only has local novelty requirements and a relatively low threshold for registrability, and also the scope of protection provided by registration is considered to be too narrow.
A significant review of Australian designs law was undertaken by the Australian Law Reform Commission in the 1990s. Many recommendations were made for change to the legislation.
In late 2002 the Designs Bill 2002 was introduced into the Australian Federal Parliament. The Bill incorporates many of the changes recommended in the report of the Law Reform Commission. Although the Bill has not yet been fully approved by the Australian Parliament, it is likely that the Bill will receive approval and will come into force in 2004. However it is likely that the opposition parties will try to force some changes to a few of the detailed provisions in the Bill.
Designs Bill 2002 – Summary of Major Proposals
Registrations will be subject to a relative novelty requirement, in other words publication anywhere in the world or use in Australia before the priority date will be destructive of novelty.
The design must be distinctive in appearance, meaning that it is not substantially similar in overall impression to prior designs.
Scope of Registration
The registration will extend to designs having substantial similarity in overall impression. This should provide broader protection than the current legislation. It is to be noted that this is a corresponding assessment to that used for determining distinctiveness for the purposes of registration .
Term of Registration
A maximum of 10 years from the filing date of the Australian application. This proposed shortening of the term of registration has raised opposition and it is possible that, instead, a 15 year term will be introduced.
There are exemptions to infringement on certain designs which are used as spare parts in the repair of another article. This aspect of the Bill is very contentious and it is possible that the opposition parties will force the Government to make changes here.
There are two main procedural changes affecting the processing of design applications. These are:
- Design applications will be examined for formalities compliance only and registrations will be granted without substantive examination for novelty. Substantive examination for novelty can be requested at any time after grant. The registration cannot be enforced until the registration has passed successfully through the substantive examination procedure after grant.
- More than one design can be included in the application/registration provided all fall within the same class of the design classification in accordance with the Locarno agreement.