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Design Copycatting – Can Changes To Design Law Knock Out The Knock Off Industry?

By August 23, 2021March 3rd, 2022No Comments

With the proliferation of designs, inventions and ideas, genuine originality in the innovation era is an exceptional achievement, giving rise to calls for an IP law revamp to better protect the investments of the innovators.

When it comes to protecting your work, there are a number of options available to designers, such as applying for registration with IP Australia. As a designer, design registration can deliver important protection to you, while also empowering you with a range of important rights that would otherwise not be available.

Design registration lasts for a period of five years, and can be renewed for another five-year period if required. As the owner of an Australian registered design, you will have the exclusive right to prevent others from making, selling, importing or exploiting the product that the design registration applies to.

Your registration also carries with it the exclusive right to:

  • make the product in Australia
  • import the product into Australia
  • sell, hire or dispose of the product in Australia
  • use the product in Australia
  • keep the product in Australia
  • authorise others to do any of the above

Opportunities And Obstacles – Balancing Your Needs

While it is clear that design registration confers several valuable rights and important protections on the owner of the registered design, some designers have noted that, until now, registering designs has in some cases resulted in limiting certain other advantages.

Key amongst these concerns is that under existing legislation, upon registration, designers lose the ability to share their designs. This means that in order to secure the protection that registration confers, designers forego several advantages and opportunities that can flow from having the ability to share their work. These advantages include potential funding opportunities, access to valuable peer recognition that is required in many cases to successfully commercialise, and the ability to receive key artistic or commercial feedback to assist in honing the design.

Interestingly this has not been the case for patent applicants in Australia who, since the early 2000s, have had the benefit of a grace period, within which they are able share their idea or invention without losing their right to protection.

Fortunately, these concerns have been heard by the legislature, and the Designs Act has been amended to remove many of these shortcomings.

Contact our designs expert now to discuss your options

What Does Design Registration Protect

Unlike other forms of IP protection, design registration protects the visual appearance or shape of the new and distinctive product, rather than its function or composition. Protection can also apply to components of the product, for example, the shape or appearance of the legs of a chair. In short, it is not the product itself that is protected, but its shape or appearance (or the shape or appearance of one or more of its components).

Design registration protection examples

3D itemsWhat is protected
ToasterShape and/or appearance
ToyShape and/or appearance
KettleShape and/or appearance
Coffee tableShape and/or appearance (or that of its components, ie legs)
ClothingShape and/or appearance
CarShape and/or appearance
YatchShape and/or appearance
2D itemsWhat is protected
WallpaperAdaption of an artistic pattern
Textiles fabricsAdaption of an artistic pattern

It is well-known that design registration provides an additional layer of protection for applicants whose products are also eligible for patent registration. However, most importantly, design registration delivers a level of protection that would otherwise be non-existent, to applicants whose products – including many artistic creations – are ineligible for patent registration. For this reason, the ability to register designs is a crucial safeguard for a huge range of innovators, and it is welcome news that many existing limits to design registration will soon be rectified when the amendments to the Designs Act come into operation.

Changes To The Designs Act To Provide Some Relief To Designers

While many have argued for some time that accessing protection under Australia’s design protection system has resulted in some difficult and potentially unnecessary trade-offs for some designers, it is hoped that amendments to the Designs Act, due to come into effect on 10 March 2022, will rectify these issues.

Amendments To The Designs Act

Grace period

Schedule 1 establishes a 12-month grace period for filing an application. This grace period safeguards designers who share their design before filing for registration. It is irrelevant for the purposes of this amendment, whether or not the disclosure was accidental or intentional. So, if a design is inadvertently shared in the public sphere, or intentionally shared to take advantage of certain valuable opportunities, the applicant may still seek protection for the design within 12 months. If the 12-month period lapses, the designer will lose these benefits.

This brings the legislation more into line with parallel patent legislation, and opens the door to a range of valuable advantages.

As a designer (or the owner of a design) you can file for protection prior to the expiration of the grace period if the disclosure was by:

  • you or another designer (or designers)
  • the owner of the design (who is not personally a designer)
  • a party authorised by you to share the design
  • a party who has shared your design without permission

Designs published by the Registrar of Designs, or by foreign designs offices, do not attract the grace period.

Infringement Exemption For Prior Use

The infringement exemption is introduced in Scheduled 2. It protects third parties against infringing someone else’s design in circumstances where that party uses a design in advance of the priority date of that registered design. This exemption applies whether the party creates the design independently, or if they duplicate the owner’s design prior to the priority date.

This exemption is intended to offset certain potentially negative consequences of the grace period, and acknowledges that third parties may be unaware of a designer’s intention to file an application for design protection.

Call us now to see how this might affect you

Removal Of Publication Option

The Act also simplifies the application and registration process in Schedule 3, by removing the option of publication without registration.

Under this reform, when you lodge a design application, you will be able to file a request for registration at the same time, or for a period of 6 months after your application is lodged. If you do not make a request within this period, your design will automatically proceed to registration.

If you decide that you do not want to register the design, you must request withdrawal of the application within this 6-month interval.

Relief From Infringement Prior To Registration

Under Schedule 4, the existing ‘innocent infringer’ defence is expanded. This defence prevents liability of a third party for infringing a design where that party is not aware that the design is registered. Under the changes, the defence will apply from the filing date, until the date of registration – a period within which the design is not available to the public on the Register of Designs.

To claim this defence, you must demonstrate that you did not know and had no reasonable way to know, that an application registration was in existence.

Where there is an innocent infringement, a court will have the discretion to refuse or reduce damages, and to refuse to grant an account of profits.

Right Of Exclusive Licensee To Commence Infringement Proceedings

Under Schedule 5, an exclusive licensee – a person or company who has licensed all the rights to a design in Australia, will have the right to bring infringement actions. This change is to protect the investment in certain design rights, of exclusive licensees.

Other Changes

There are a range of other amendments relating to process and requirements that it is hoped will simplify the system as well as make rules and requirements more adaptable to changing technology.

Amendments to the Designs Act have been well received, and are seen as a welcome improvement to the system for designers, while also delivering important protections to the legitimate interests of other parties.

Need further information? Contact us to learn more.

Author: Daniel Abraham | Registered Attorney & Principal at Platform®IP
This publication is introductory in nature. Its content is current at the date of publication. It does not constitute legal advice and should not be relied upon as such. You should always obtain legal advice based on your specific circumstances before taking any action relating to matters covered by this publication. Some information may have been obtained from external sources, and we cannot guarantee the accuracy or currency of any such information.