Changes to the Designs Act
The Act implemented a number of recommendations accepted by the government that arose from the Advisory Council on Intellectual Property’s (ACIP) Review of the Designs System (ACIP Report). It received Royal Assent on 10 September 2021.
The Act has 7 schedules. Schedule 1 and 2 commenced on 11 September 2021, and the remaining schedules commenced on 10 March 2022.
Schedule 1: 12-month grace period
Schedule 1 introduced a 12-month grace period for designers. The grace period protects designers who disclose their design before filing their design application. It only applies to applications filed or disclosures made on or after 10 March 2022.
You can file for protection during the grace period if the original disclosure of the design was by:
- The designer or designers
- The owner of the design where this is someone other than the designer (e.g. an employer or a successor in title)
- A third party authorised by the designer or design owner (e.g. a marketing company releases a publication authorised by the owner)
- A third party using the design without the designer or owner's permission (e.g. a third party reviewing the design on their website or social media).
Publications of designs by the following aren’t eligible for the grace period:
- The Registrar of Designs
- Foreign and international designs offices.
Schedule 2: Infringement protection for prior use
Schedule 2 introduced an infringement exemption which protects third parties against infringing a registered design if they started using it before the priority date. It applies if the third party independently creates the design, or they copy it from a disclosure by the design owner before the priority date.
This reform balances the rights of designers and third parties after the introduction of the grace period. Third parties may not be aware of a designer’s intent to file a design application within the grace period.
Schedule 2 also protects people who legally obtain products from a third party, allowing them to use and sell those products without infringing the design.
If you start using a design before the priority date of its application for registration, you'll be able to continue:
- Selling products.
Schedule 3: Registration of designs - removal of publication option
Schedule 3 streamlined the design application and registration process. It removed the option to publish a design without registering it and made registration automatic after 6 months.
You're able to file a request for registration with the design application or during the 6-month period after it’s lodged. If a request isn't made during this time, the design will automatically proceed to registration.
If you don't want to register the design, you must request withdrawal of the application within the 6-month period.
Schedule 4: Relief from infringement before registration
Schedule 4 extended the current ‘innocent infringer’ defence. This defence prevents third parties being liable for infringing a design when they don't know the design is registered.
The change expands the defence so it also applies to the period between the filing date of a design application and the date of registration. During this period, the design isn't publicly available on the Register of Designs. This means that even if a third party searches the register, they wouldn't know that a design application has been filed, so there is a risk of infringement.
You must prove you didn't know, and had no reasonable way to know, that the application was filed to benefit from the defence.
In such cases of innocent infringement, a court will now have the discretion to:
- Refuse to award damages
- Reduce damages
- Refuse to award an account of profits.
Schedule 5: Right of exclusive licensee to bring infringement proceedings
Schedule 5 gave exclusive licensees the right to bring infringement actions under the Designs Act. An exclusive licensee is a person or company who has licensed all the rights to a design in Australia. This change ensures exclusive licensees can enforce the design rights they have licenced.
Schedule 6: Updating formal requirements
Schedule 6 streamlined the process for updating the formal requirements for design applications. Formal requirements are rules about, for example, what information must be included in an application and how drawings must be presented. This change allows the rules to be easily adapted to keep up with changing technology.
This amendment gives the Registrar of Designs the power to specify formal requirements for design applications by written determination.
Schedule 7: Other amendments
Schedule 7 made minor improvements to the Designs Act to clarify and simplify the designs system. There are 3 parts to the Schedule.
- Part 1 Standard of the informed user
- Part 2 Revocation of registration of design
- Part 3 Renewal of registration of design.
Further information on each part is available in the Explanatory Memorandum.
Corresponding changes to regulations
Amendments to the Design Regulations supported the Act. Schedules 1, 2, 4 and 5 of the regulation amendments made amendments resulting from the changes made by the Act.
Schedule 3 of the amendments made a further change, providing consistency between entitlement to own a registered design in the Designs Act and the entitlement to make an application under the Paris Convention
We're always working to help make it easier for you to apply for and manage your design right. Throughout our reform work, we consulted with stakeholders and received submissions on what could be improved.
You can view our consultation on implementing accepted recommendations from ACIP's review of the design system and further consultation on an exposure draft of the legislation.