Changes to the Designs Act come into effect today, 10 March 2022, which improve the usability of the Australian designs regime. These changes are particularly important for:
- designers in fast moving industries (such as fashion) where the commercial value of a design may not be known until exposed to the market;
- exclusive licensees, which can now take action against third party infringers; and
- designers who have accidentally published their designs in the 12 months prior to a design application being filed.
These changes increase the value of design registrations and align the designs regime with other Australian IP regimes and foreign jurisdictions, such as the USA and the United Kingdom.
Companies which generate value through the commercialisation of designs, particularly in FMCG industries, should be taking the opportunity to review their IP protection strategy in light of the changes to the Designs Act.
The key changes are as follows:
12-month grace period
Design applicants now have up to 12 months after they first publish or use their design before filing the application. This only applies to publication or use after 10 March 2022.
It means that designers:
- can test the market before opting for the time and expense to register their designs; and
- are not punished for inadvertent early publication.
Prior use defence
However, designers should still submit applications as soon as possible because a prior use defence has also been introduced. Generally, a third party will be able to use (and continue to use) a registered design as long as it started using the design before the owner applied to register the design.
Exclusive licensees can enforce registered designs
Exclusive licensees can now enforce a design without needing to rely on the registered owner. This amendment aligns the rights of exclusive licensees of designs with licensees of patent and trade mark rights.
However, as with patents, this only applies where the licensee holds all of the exclusive rights across all of Australia. For instance, it is expected that a licensee with exclusive rights limited to NSW will need the cooperation of the registered owner to enforce the design against third party infringers in NSW (or elsewhere).
Standard of similarity between designs
The standard against which designs registrability and infringement is assessed has been adjusted from one of ‘informed user’ to ‘familiar person’. That is, the person need only be familiar with the product in question, and not necessarily a user of the product. This is intended to resolve previous uncertainty in how the standard was to be assessed.
Our IP team can help with design advice, applications and enforcement. If you have any questions, please reach out to us.