informed user

The ACIP Designs Amendments have been enacted

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.[1]

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”.[2] That is, s 19(4) has been amended to test distinctiveness:[3]

(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.[4] 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.[5]

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).[6] 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.

Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021

Explanatory Memorandum

Addendeum to the Explanatory Memorandum

The ACIP Report

Lid dip to Brett Massey at IP Australia for drawing my attention to the correct date the second round commence (assuming not proclaimed earlier).


  1. At the time of writing, the Act does not appear to be on Austlii, but you can find it here.  ?
  2. Schedule 7 Part 1 item 5(1) and (2).  ?
  3. Text in italics inserted by the amendment. This is my mark up I’m afraid.  ?
  4. Patents Act 1990 s 22A and s 138(4).  ?
  5. Schedule 7 Part 2 item 8 and Explanatory Memorandum para 248.  ?
  6. 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.  ?

The ACIP Designs Amendments have been enacted Read More »

More on the Designs ACIP bill

Following Friday’s post, the text of the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 and the Explanatory Memorandum are now available.

So:

  • Schedule 1: the 12 month ‘grace period’ before the priority date for prior use/publication by or with the consent of the design. Publications by the Registrar of Designs (i.e. on the Register of Designs) or by an equivalent overseas person or body will not be able to claim the benefit of this ‘grace period’. On the other hand, if some third party starts using, or publishes, the design or a substantially similar design after the design owner, there will be presumption that the third party derived its design from the design owner. In other words, if the registered owner is relying on the ‘grace period’, the onus will be on the person asserting invalidity by prior use or publication in the 12 month ‘grace period’ to prove the prior art relied on was not derived from the registered owner or the owner’s predecessor in title.
  • Schedule 2: will introduce new s 71A to provide an exemption from infringement for persons who start using a design during the 12 month ‘grace period’ introduced by Schedule 1. The exemption will continue to operate after the design is registered. The exemption extends not only to those who actually engage in an otherwise infringing act but also to a person who: had taken definite steps (contractually or otherwise and whether or not in Australia) to do [the otherwise infringing] act…. According to the EM, ‘definite steps’ will not be satisfied by mere ‘initial steps’. The plans must be finalised and the process of acquiring or making all components must have started. Under 71A(4), the person entitled to the exemption may “dispose” of their entitlement so that the exemption passes to the disposee – presumably, it follows from the disposal of the entitlement that the disposer cannot continue to claim the benefit.
  • Schedule 3: removes the publication option – the nice flowchart of the options for requesting registration and the formalities check is now on p. 23 of the EM.
  • Schedule 4: will amend s 75 to provide a further ‘innocent infringer’ defence for acts done prior to registration of the design (when the design representations are first published). The amendment will give the Court a discretion not to award damages where the defendant satisfies the Court that, when the infringing acts were done, the defendant was not aware, and could not reasonably have been expected to be aware, that the design application had been filed.
  • Schedule 5: will give an exclusive licensee standing to sue for infringements. By proposed s 5A, an exclusive licensee will be defined to be as a person to whom the registered owner has granted the exclusive rights in the design.[1] An exclusive licensee may be empowered to sub-license. A person will not be disqualified as an exclusive licensee, however, if their exclusive rights do not include the right to sub-license.
  • Schedule 6: will empower the Registrar to specify the formal requirements for design applications by publishing notices – these formalities will no longer by specified in the regulations and such notices will not be “legislative instruments”
  • Schedule 7
    1. Repeals “the standard of the informed user” and replaces it with the “standard of the familiar person” adopted in Multisteps.
    2. Will give the Court a discretion whether or not to revoke a registered design on grounds of lack of entitlement unless satisfied in all the circumstances it is just and equitable to do so – this will bring the revocation power on this basis in line with s 138 of the Patents Act.
    3. Will permit revocation on grounds of fraud, false suggestion etc. perpetrated at the examination stage.
    4. Makes provision for ‘revived’ designs where the renewal fees are not paid until after the expiry of the initial 5 year term:
      1. If the renewal fees are paid within 6 months after expiry of the initial term (the so-called ‘renewal grace period’), the registration will be treated as remaining in force and never to have ceased;
      2. But if the renewal fees are paid after 6 months (on the basis of an application for an extension of time), the registration will be treated as having ceased on the expiry of the 5 year term.
      The significance of these differences is that a third party should not start using the design in the 6 month ‘renewal grace period’. The protections under s 140 will be available only to persons who start using after the expiry of the ‘renewal grace period’.

  1. Strictly speaking, the exclusive rights conferred by s 10(1)(a) to (e) only. Can anyone think of a rational reason why s 10 confers on the registered owner the exclusive licence to authorise people to do the acts in s 10(1)(a) to (e), but authorising an infringement is not an infringing act under s 71?  ?

More on the Designs ACIP bill Read More »

Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020

The Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020 was introduced into Parliament on Wednesday, 2 December.

At the time of writing the links to the text of the Bill and the Explanatory Memorandum are inactive.[1] You can read, however, the Minister’s Second Reading speech.

Also there has already been consultation on an exposure draft and IP Australia’s response to that public consultation. So we know broadly what is in the Bill, although there were a number of details to be worked out following IP Australia’s response.

According to the Minister’s Second Reading speech:

  • the Bill introduces the 12 month ‘grace period’ for design owners who make their designs publicly available before they file their design applications – this was Sch. 1 in the exposure draft. As the Minister pointed out, this will align Australia’s registered design law with “many of our major trading partners” (including the EU and the USA);
  • the Bill will give exclusive licensees standing to bring infringement proceedings – this was Schedule 4 in the exposure draft. In the exposure draft at least and as with patents, the exclusive licensee had to be the exclusive licensee of the whole right;
  • the Bill will remove the “rarely used” publication option so that every application will be an application for registration – one consequence of this reform as implemented in the exposure draft was that a design application will automatically proceed to formalities examination and registration 6 months after filing if registration was not requested earlier;[2]
  • there will also be a prior user defence for a person who commences using a design during the ‘grace period’ before the design application is filed – this was Schedule 2 in the exposure draft;
  • in addition, in cases where registration is delayed (up to 6 months from the filing date), there will be some sort of “innocent infringer” defence for a person who commences using the design in the period between filing and registration (as it is only on registration that the design representations are published);
  • there are also “smaller technical corrections and improvements” including revocation of a design for fraud, false representation etc. during certification.

Although the Minister’s Second Reading speech does not mention it, the exposure draft also included in Schedule 6 the amendment of s 19(4) to abandon the “informed user” test and adopt the “familiar person” test.

The Minister also indicated the Bill “is just the first stage of the Government’s ongoing program of designs reform, with more improvements to come after further consultation.” According to IP Australia’s consultation page (scroll down), the following matters are still on IP Australia’s Policy Register:

  • Protection of partial designs – Policy ID 42 This issue apparently has “high priority”;
  • Protection of virtual, non-physical and active state designs – Policy ID 43 This issue apparently has “high priority”;
  • Clarify ambiguity in section 19 of the Designs Act – Policy ID 35 A third issue with “high priority”;

(This is in addition to the change from “informed user” to “familiar person”.)

  • Clarification of ‘registered’ and ‘certified’ designs – Policy ID 37 Also “high priority”;
  • Some of the amendments proposed in Recommendation 18 of the ACIP Designs Review (18b, 18d, 18e and 18g are not progressing at this time) – Policy ID 45

For the research reports arising from the longer term Designs Review Project, see here.

Debate on the Bill itself has been adjourned to the first sitting day of the next period of sittings – presumably, in 2021.

Lid dip: Genevieve Corish at LexisNexis


  1. When they do appear (presumably in the next few days), they should be accessible from here and/or here.  ?
  2. This was Sch. 3 in the exposure draft. The exposure draft Explanatory Memorandum at p. 22 had a nice flowchart illustrating the application and registration process under the proposed regime.  ?

Designs Amendment (Advisory Council On Intellectual Property Response) Bill 2020 Read More »

A “new” Act designs case!

Nicholas J has ruled that by selling its Razor fan Martec has infringed Hunter Pacific’s registered design for a ceiling fan hub, ADR No. 340171.

On the right below are two of the representations in the design:[1]

ADR 340171 perspective
ADR 340171 perspective

796.12
Martec’s Razor

 

 

 

 

 

 

 

 

 

ADR 340171 hub
ADR 340171 hub

 

Martec's Razor hub
Martec’s Razor hub

 

 

 

 

 

 

 

 

 

 

 

 

and on the left above are corresponding views of Martec’s infringement.

On the s 19 analysis mandated by s 71, Nicholas J recognised a number of obvious differences between the registered design and the Razor. However, the overall impression conveyed was one of similarity. In particular, the lower “hubs” were similarly proportioned and conveyed a generally sleek and flat appearance. This was particularly important as this was the feature which contributed most to the informed user’s assessment of the design. As Hunter Pacific’s expert pointed out, that was significant as a ceiling fan hub would be viewed from underneath, looking up. Thus, his Honour concluded:

Although they exhibit a number of obvious differences in shape and configuration, these differences are in my view insufficient to displace what I consider to be significant and eye-catching similarities that create an overall impression of substantial similarity.

It is a bit difficult to tell as images of the prior art are not included. That said, the verbal descriptions suggest that the Razor was much closer to the registered design than any of the prior art. The number of prior art advanced by Martec served to emphasise that there were many different ways to achieve the same functional outcome. Accordingly, while the designs were to some extent dictated by function, there was no significant restriction on the designer’s freedom to innovate.

Nicholas J did not explicitly take sides on the debate about who was the informed user, simply restating the statutory test.[2] His Honour did follow Yates’ J lead, however, in emphasising that the impression that the informed user would form was not based on a fleeting or casual inspection. Rather, it required a careful and deliberate visual inspection.

Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796


  1. The annotations were marked up by one of the witnesses.  ?
  2. Contrast the “Review” approach vs Multisteps discussed by Yates J at [57] – [71].  ?

A “new” Act designs case! Read More »

ECJ’s first case on Registered Community Design

ECJ’s first case on Registered Community Design Read More »

Review cases handed down

On Friday, Kenny J handed down the 2nd and 3rd substantive design cases under the new Act:

  • in Review v Redberry [2008] FCA 1588, her Honour found the design valid but not infringed;
  • in Review v New Cover [20089] FCA 1589; valid and infringed including $85,000 damages (of which $50,000 were for additional damages).

The judgments will no doubt be up on Austlii soon but, until then, students can download pdfs from the links below:

review-v-redberry-judgment

review-v-new-cover-judgment

Lid dip, Sue Gatford.

Review cases handed down Read More »

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