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DesignsSummary
of Key Features
Summary of Key Features
A more streamlined registration process
The Designs Act 2003 provides a more streamlined registration system. A design
application can be filed containing one design, a single design in relation
to many products or multiple designs provided all the designs fall within the
same classification class. The applicant has six months from the priority date of the application in which
to decide to register or publish any of the designs in an application.
Design applications now only undergo a formalities check prior to being registered. The Act
implements a system of post-registration examination for substantive issues. Substantive
examination will only be undertaken if requested.
Better enforcement and dispute resolution procedures
A design owner may only take action to enforce their registered design if a
certificate of examination has been issued. If, following examination of a registered
design, the Registrar of Designs finds that the design meets all the requirements
of the legislation then a Certificate of Examination will be issued and the
design will remain on the Register. If the Registrar finds that the design is
not valid then it will be removed from the Register.
Third parties will be able to request examination of registered designs and provide any information relevant to the validity of the design registration. The Registrar can also initiate examination where the circumstance warrants.
Stricter eligibility and infringement tests
The Designs Act 2003 implements a higher threshold test for validity
of designs. This new threshold test is a two step test; namely, a design
is not a registerable design (ie able to remain on the register) unless it is
both new and distinctive. This test provides that
minor or insignificant changes to a design are irrelevant if the overall impression
remains one of substantial or significant similarity. That is, the focus is now on the
similarities between the two designs, rather than the differences.
The infringement test is consistent with the definition of distinctive.
If another design is used that is substantially similar in overall impression
to a registered design, that use will be an infringement. This infringement
test is designed to be clear and simple and for the design rights to be more
readily enforceable.
The threshold for a registered design (ie be able to remain on the register)
is also raised by expanding the prior art base. Design registrations continue to be assessed
against designs used previously in Australia but expanded to include those that have been published
anywhere in the world.
It should be noted that the Act also includes a defence against infringement
where a design registered 'spare part' is used to repair a 'complex product'.
Clearer definitions
Click
here to view the definitions as stated in the Act.
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