The Designs Act 2003 comes into force: what you need to know

The Designs Act 2003 comes into force: what you need to know

The Designs Act 2003 came into force on 17 June 2004 superseding the previous legislation, the Designs Act 1906. The 2003 Act will apply to all applications filed from 17 June 2004 although the previous legislation will continue to apply to already granted registrations and applications filed prior to 17 June 2004. The major changes introduced by the Designs Act 2003 are outlined in this update.

Novelty

The previous legislation only had a local novelty requirement. Under the new Act, registrations will be subject to an extended novelty requirement, so that documentary publication anywhere in the world before the priority date will be destructive of novelty. No grace period is applicable.

Registrability

The previous legislation only prescribed a relatively low threshold for registrability. Under the new Act, the design must be distinctive in appearance, meaning that it is not similar in overall impression to a prior design.

Scope of registration

The registration will extend to designs having substantial similarity in overall impression. This should provide broader protection than the previous legislation.

Term of registration

A maximum of 10 years from the filing date of the Australian application.

Spare parts

There are exemptions to infringement on certain designs which are used as spare parts in the repair of another article. The wording of the relevant sections of the Act is not particularly clear and seems to confine this exemption only to spare parts used to restore the appearance of an article. The Government recognises that there may be difficulties in the practical operation of these provisions and has indicated that a further review should be conducted within the next few years.

Procedural changes

There are two main procedural changes affecting the processing of design applications:

  1. 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.
  2. 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.

Regrettably, the manner in which this part of the legislation has been implemented as regards the official fees applicable to an application with more than one design and also the actual processing of the application itself means that the potential savings in terms of cost and convenience have mainly been negated.

Transitional provisions

  1. Registrations granted under the previous legislation prior to introduction of the new Act will continue to be governed by the provisions of the previous legislation in all respects including term (16 years maximum) and novelty requirements (local only).
  2. Applications filed under the previous legislation and still pending when the new Act came into force will continue to proceed under the previous legislation as discussed in (1) above.

However at the election of the applicant, an application pending at that stage can be converted into an application proceeding under the new Act. This means that an applicant may take advantage of the new infringement provisions which seem to provide for somewhat broader protection. Against that, the maximum term will be restricted to 10 years and the applicant will be facing more onerous novelty requirements. Accordingly an applicant in deciding whether to make the conversion will need to assess these relative advantages and disadvantages.