http://ipkitten.blogspot.com/2021/09/long-awaited-changes-for-australian.html
Differences in the treatment of design law across jurisdictions remain a fascinating subject. Kat friend, Dr. Tyrone Berger, reports on what he calls “long-awaited changes” to the design law of Australia.
Australia’s Parliament has recently passed the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 to allow designers more flexibility and simplify the designs system. Royal Assent was granted on 10 September 2021. Key changes to the Designs Act 2003 (Cth) include a 12-month grace period to apply for a design, a prior user exemption, providing exclusive licensees with legal standing, and clarification of the ‘informed user’ standard. In addition, Australia differs from EU law in that it requires identifying a person familiar with the product, as opposed to potential users, concerning registration and infringement matters.
These reforms come after a lengthy consultation period by IP Australia before announcing in 2020 plans to implement the former Advisory Council on Intellectual Property (ACIP) recommendations from its 2015 review of the Australian designs system. Despite this, IP Australia does not consider protection is warranted for virtual or non-physical designs (eg GUIs) and protecting parts of products (partial designs) at this time. [Merpel adds: this really grabbed her attention.]
Grace period
The grace period seeks to help protect designers from losing their rights through inadvertent disclosure before obtaining legal protection. For instance, if a designer publishes his prototype on social media before filing for a design right, he may currently lose his opportunity to obtain a registration. Inadvertent disclosures are often a result of a lack of awareness of the operation of the design system.
The grace period will provide designers with 12 months to apply for design protection after publishing or using their design. This will be particularly useful for industries where designs have a short shelf life, such as the fashion industry.
Prior user exemption
Under a grace period, designers will face a longer period, until the design is registered and published, during which it remains unclear whether registration has been sought. A prior user exemption alleviates this problem by protecting third parties against infringing someone else’s registered design if they started using their own design before the priority date of the registered design. This measure is modelled on analogous provisions in the Patents Act 1990 (Cth).
Standing for exclusive licensees
Exclusive licensees will soon have legal standing to take infringement action through the courts so long as the design owner is made a defendant in the proceedings, or they are joined as a plaintiff. This amendment ensures that exclusive licensees can enforce their rights under the licence, especially where the design owner may be foreign-based, or reluctant to do so.
Standard of the informed user
This amendment seeks to clarify the standard of the informed user when assessing factors affecting whether one design is substantially similar in overall impression to another. The preferred approach in Australia follows the Federal Court in Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743, which does not require a person to be a user of the product (or similar product) to which the design relates. Instead, the person need only be familiar with the product.
In the words of Yates J at [66]:
… [T]he standard does not proceed on the requirement that the notional person be a user of the products in question – although, obviously, familiarity can be gained through use.
The approach also touches on the repair defence, that is, when assessing an act to repair a product, it must be established that the repair is not materially different from the product’s original appearance. In determining what is materially different, a court must apply the standard of the informed user.
When will the changes take effect?
Changes to the standard of the informed user will come into effect the day after Royal Assent, while the rest of the key changes will commence in six months. The remaining reform measures contained in the Bill involve minor technical changes and are listed on IP Australia’s website.
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