Designs legislation now enacted in Australia – Intellectual Property
Australia: Designs legislation now enacted in Australia
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In our previous article, we discussed the Design Change (Intellectual Property Advisory Council) Bill 2020 (Cth) which had been presented to the Australian Senate to amend the Designs Act 2003 (Cth) (“the Law”).
The bill has since been passed by both houses of the Australian Parliament and on September 10, 2021 received Royal Assent from the Governor General. Among the changes, now enacted, some have already entered into force while others will enter into force later.
Amendments already implemented, which entered into force on September 11, 2021, include the introduction of:
- provisions according to which the “familiar person” standard applies in a comparison between a registered design and another design to assess the validity or infringement of the registered design, specifying that the person (previously named in the Act as “informed user”) need not be a user of the product to which the registered design or similar products relates; and
- provisions under which a court may revoke a design registration on the grounds that a certificate of examination has been obtained in respect of the registration by fraud, false suggestion or false declaration.
Changes to be implemented at a later date, which will take effect on a day to be fixed by proclamation or the March 10, 2022 failing this, include:
- the introduction of a grace period whereby designs which are relevantly linked to a registered design owner and which have been published (other than by an official register) or used within a period of 12 months immediately preceding the priority date may be ignored in assessing whether the registered design is new and distinctive;1
- introduction of a registered design infringement exemption for persons who have used or taken concrete steps to use a comparable design before the priority date;
- removal of the possibility of publishing (rather than registering) a design which is the subject of a design application;
- removal of the obligation to submit an express request for registration in order to initiate the formal examination of a design application;
- grant courts express discretion to impose reduced or no pecuniary compensation for innocent offenses (pre-registration);
- allow an exclusive licensee of a registered design to bring an action for infringement of the design; and
- Enabling the Designs Registrar to establish formalities requirements for design applications / registrations.
We will provide a new update in due course.
1. The provisions relating to the grace period are not retroactive and only apply to previous publications and uses occurring after their date of entry into force.
Originally published September 14, 2021
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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