On 10 September 2021, the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 received Royal Assent, becoming the 100th statute enaceted by the Commonwealth Parliament this year.
As the marvellously evocative title indicates, this Act amends the Designs Act 2003 to implement the recommendations of ACIP’s Review of the Designs System: Final Report from March 2015 which have been accepted.
Two amendments come into force straight away. The rest (unless proclaimed earlier) come into force 6 months (and a day) later –
11 10 March 2022.
Amendments with immediate effect
So, for design applications made on or after 11 September 2021, the distinctiveness of a design and its infringement will now be tested by the standard of “the familiar person”. That is, s 19(4) has been amended to test distinctiveness:
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person (the familiar person) who is familiar with the product to which the design relates, or products similar to the product to which the design relates
(the standard of the informed user)(whether or not the familiar person is a user of the product to which the design relates or of products similar to the product to which the design relates).
Australia’s adventure in testing the validity and infringement of a registered design by somethin akin to the EU’s “informed user”, therefore, has come to an end.
Also, s 93(3) has been amended so that the registration of a design can be revoked on lack of entitlement grounds only if the Court is satisfied that it is just and equitable to do so in all the circumstances. This brings revocation on entitlement grounds in line with the Patents Act. The idea here being to ameliorate the harshness of the sanction to validity in the case of essentially honest mistakes.
This amendment will apply to any applications to revoke a registered design made on or after 11 September 2021. It does not matter when the design was registered.
Amendments coming into force later
The remainder of the amendments come into operation later: If not earlier proclaimed, on the day after six months from Royal Assent.
A number of these have been covered in earlier posts. They include:
- the 12 month grace period for publications or public uses made before the priority date by or with the consent of the registered owner, a predecessor in title or “the person who created the design” (Schedule 1);
- conferring power on exclusive licensees to sue for infringement (Schedule 5);
- the introduction of an exemption from infringement on the grounds of prior use (Schedule 2);
- the application process will be changed so that, if a request for registration is not filed with the design application, a request will be deemed to have been made 6 months from the application date (if not made earlier or the application has not been withdrawn). In other words (and assuming the application passed the formalities test), a design will be registered automatically 6 months after the application is filed rather than lapse if no request has been filed (Schedule 3);
- relief from liability for infringement for acts done before the design was registered (i.e. between the priority date and publication of the design) (Schedule 4);
- removal of the unused option to publish a design rather than register it (Schedule 3).
There are also some other, technical amendments.
Some care will be needed with the “transitional provisions”. For the most part, the amendments will apply only to design applications made on or after the commencement of the relevant amendments.
Lid dip to Brett Massey at IP Australia for drawing my attention to the correct date the second round commence (assuming not proclaimed earlier).
- At the time of writing, the Act does not appear to be on Austlii, but you can find it here. ?
- Schedule 7 Part 1 item 5(1) and (2). ?
- Text in italics inserted by the amendment. This is my mark up I’m afraid. ?
- Patents Act 1990 s 22A and s 138(4). ?
- Schedule 7 Part 2 item 8 and Explanatory Memorandum para 248. ?
- The “relevant period” is to be prescribed in the regulations but the helpful flow chart included in the Explanatory Memorandum indicates the “relevant period” will be 6 months. ?