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Designs Act 2003
Transitional and Saving Provisions
NOTE: This information provides a broad overview of the transitional and saving
provisions of the Designs Act 2003. It is not intended to be, nor should it
be used as, a replacement for the provisions of the Designs Act 2003 themselves.
The information is provided to explain in plain language the transitional issues
associated with the repeal of the Designs Act 1906 and the commencement of the
Designs Act 2003.
Commencement:
The Designs Act 2003 (“the new act”) commenced on Thursday 17th
June 2004.
Repeal of the Designs Act 1906:
Section 150 of the new act repeals the Designs Act 1906 (“the old act”).
All applications, request, actions and proceedings filed on or after 17 June 2004
will be under the provisions of the new Designs Act 2003.
Transitional and Saving provisions are set out in Chapter 12, Part 2, Sections
151 to 161 of the Designs Act 2003.
Application of the new designs act to certain designs (S.151):
A design that was a registered design immediately before the commencement date
or which was registered after the commencement date but as a result of a design
application to which the old act continues to apply because of S.153 is taken
to be a registered design under the new act. The registered design is also taken
to have a certificate of examination under S.67 of the new act and cannot be
examined under Chapter 5 of the new act.
The old act continues to apply for the purposes of determining the validity
of a design registration that was a registered design immediately before the
commencement date of the new act, and the new act will not apply.
The old act also continues to apply for the purposes of determining the validity
of a design registration that was registered after the commencement date of
the new act but as a result of a design application to which the old act continues
to apply because of S.153 of the new act, and the new act will not apply.
Term of registration of certain designs (S.152):
The term for designs registered under the provisions of the old act, whether
before or after commencement of the new act, will be the term of registration
the design would have had under the old act. In other words, all old act registrations
have a possible maximum 16 year term, with renewal periods and fees as they
existed under the old act.
Section 27A of the old act continues to apply to these old act registrations
as if it had not been repealed.
Applications made before the commencing day (S.153):
The old act continues to apply to any design application filed under the old
act as if the old act had not been repealed - unless a conversion request is
made under S.159.
If after examining an old act application, the Registrar is required to register
the design, the registration will be done under old act provisions. The Registrar
must enter the design in the Register of Designs and issue a Certificate of
Registration as per S.45 of the new act.
An application for an extension of time in relation to an application filed
under the old act must, however, be made under section 137 of the new act.
Other applications and proceedings (S.154):
Any application, request, action or proceeding made or started under the old
act which has not been finally dealt with under the old act will be dealt with
as if the application, request, action or proceeding had been made or started
under a corresponding provision of the new act.
This does not apply to a design application to which the old act continues
to apply because of S.153 (above) or to a court proceeding covered by S.155
(below).
Pending Court proceedings (S.155):
Court proceedings pending before the commencing day will be decided as if the
old act had not been repealed.
Infringement under the old act (S.156):
After the commencement date, an action for infringement in relation to a design
that was registered under the provisions of the old act, either before or after
the commencement date of the new act, may be brought under the new act. However,
the old act continues to apply for the purposes of determining whether a persons
conduct is an infringement or not, and the new act does not apply for the purposes
of determining infringement. A person is not entitled to any injunction or relief
they would not have been entitled to under the old act.
More information:
More information on issues relating to the transitional and saving provisions
of the Designs Act 2003 can be obtained:
• from the Questions & Answers database on our New Act webpage -which
is accessible from the IP Australia website, www.ipaustralia.gov.au ; or
• by contacting our Customer Support Centre via phone on 1300 651010 or
by email at assist@ipaustralia.gov.au
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