Hague consultations – outcome

IP Australia has published a report on the results of its consultations on the economic consequences of Australia joining The Hague Agreement for the international registration of industrial designs.

In short, there’s a bit of minor tweaking, but the outcome is pretty much the same. The revised best estimate:

  • net benefit to Australian designers is $3 million (up from $1.7 million)
  • net cost to Australian consumers is $39.7 million (down from $58 million)
  • net cost to Australian IP professionals is $2.5 million (unchanged)
  • net cost to the Australian Government is $2.8 million (unchanged).

Perhaps one of the most interesting aspects of the report is an analysis of all infringement court cases involving patents, trade marks or registered designs since 2008:

Rate of infringement cases by registered IPR

There have been far less design infringement cases but, having regard to the number of registered designs, litigation is in approximately the same proportion as trade mark infringement cases,[1] but approximately only one third the rate of patent litigation.

Another surprising aspect: the New Zealand Intellectual Property Association also made submissions – which appear to have been rather influential – which strongly opposed Australia joining the Hague system.

Finally, the report is at pains to say that the costs benefit analysis of joining Hague is only one factor being considered. Anyone want to put money on Australia joining (before we sign up to anothere one-way trade agreement with, this time, the EU)?


  1. The report gets a bit over-excited by the high proportion of certified designs which get litigated – well, duh!  ?

Enforcing foreign judgments – consultations

The Commonwealth government is participating in negotiations for a new Convention on the recognition and enforcement of foreign judgments. Now it is seeking public input on a range of outstanding issues.

One of the general issues on which input is sought is the extent to which and the nature of problems experienced in trying to enforce a judgment in a foreign country.

Intellectual property issues are high on the list of matters being debated. Chapter 5 of the consultation paper is directed to intellectual property rights’ issues.

The issues include whether or not intellectual property rights should even be included in the judgments covered by the Convention. So draft article 2(m) proposes to exclude judgments about intellectual property rights from the Convention altogether; alternatively, articles 5 and 6 proceed on the basis that intellectual property rights are included. Which approach should it be?

If included, the basic idea is that a judgment on subsistence, ownership or infringement of an intellectual property right made by a Court in the country which granted the right could be enforceable under the proposed Convention to the extent that the judgment dealt with the subsistence, ownership and infringement of the right in that country.

It is proposed to treat judgments about the subsistence, ownership and infringement of registered rights granted by the country where the judgment is made as falling exclusively under the Convention. Judgments about unregistered rights, such as copyright and unregistered designs, would not be exclusive.

According to the consultation paper, one consequence of this arrangement would be that judgments involving “multi-state IP infringements” of registered rights will be enforceable under the Convention only to the extent that the judgment relates to infringements in the country/jurisdiction issuing the judgment.

No doubt for sound philosophical rationalising, trade secrets do not count as intellectual property rights under the draft Convention. Practically speaking from a business’ perspective, however, one might wonder why confidential information should be treated differently to unregistered “rights”.

Another area of issues raised in the consultation paper is the extent to which awards of damages, especially additional or exemplary or otherwise punitive damages, should be capable of enforcement under the Convention.

As the next (and possibly final) meeting of the commission preparing the draft for a Treaty conference is on 24 – 29 May 2018, the deadline for submissions is COB 27 April 2018.

Hague Conference Judgments Project: Recognition and enforcement of foreign judgments

ACIP Final Designs Report

ACIP’s final report into its review of the Designs System has been published.

The report is 70 pages (including annexes) – 43 pages for the report itself; and 23 recommendations. Key recommendations include:

  • investigate joining the Hague system and, if a decision is made to join, extend the maximum term of design protection to 15 years;
  • introduce a grace period of 6 months before the filing date, but require an applicant relying on it to file a declaration to that effect;
  • rename a registered design that has not been certified as an “uncertified design”;
  • require a registered design owner to request examination by the first renewal deadline (i.e. 5 years);
  • introduce a system of opposition following certification;
  • improve the process for multiple designs by reducing fees in line with the ALRC’s original proposal;
  • allow fiddling with the statement of newness and distinctiveness until certification;
  • fix up a range of anomalies;
  • specifically include the role of the designs system in any broader review of Australia’s IP framework such as that contemplated by the Competition Policy Review;
  • not introducing an unregistered design right.