The following is a brief summary of the main changes to Australian designs law introduced by the Designs Act 2003.

Effect
The Designs Act 2003 comes into force from 17 June 2004, and applies to all applications filed from that date. Applications filed before that date will remain subject to the scheme of the previous designs legislation. The Applicant of an old Act design application which has not yet been registered may apply for conversion to the new Act.

Term of Registration
The maximum registration term of new Act design registrations is 10 years (5 years + 5 year renewal) from the filing date, compared to 16 years for old Act registrations. For converted applications, the 10 year term will run from the date of the conversion request.

Design
The new Act defines a design as being the overall appearance of a product resulting from one or more visual features of the product. A component part of a complex product may be protected if made separately, though will be subject to a right of repair infringement exemption (discussed further below).

New Distinctiveness and Infringement Tests
The old Act tests for a "new and distinctive" design and for infringement of a design registration were applied narrowly by the Courts. These have been replaced by a unified "similarity of overall impression" test to be applied from the viewpoint of an informed user familiar with the product. In applying the new test, more weight is to be given to similarities than to differences and regard is to be taken of the state of the prior art base at the priority date, any features mentioned in a statement of newness and distinctiveness and the freedom of the designer to innovate. If only part of the design is similar to the prior art, regard must be had to the amount, quality and importance of that part to the design as a whole.

The intention of the new provisions is to require a higher standard of differentiation from the prior art before a design may be validly registered, but to give a broader infringement test offering greater protection to designs.

The prior art base under the new Act will be designs published in a document anywhere in the world, or designs used, registered or subject of a design application of earlier priority date in Australia. Unlike the Australian Patents Act, there is no grace period against self-disclosure, other than continuation of the limited existing copyright/designs overlap provisions.

Single Design Application for Multiple Designs
The new Act will allow a single design application to include multiple designs, for:

• one design in relation to one product;
  
• one design that is a common design in relation to more than one product;
  
• more than one design in relation to one product;
  
• more than one design in relation to more than one product, if each product belongs to the same Locarno Agreement class.

Unfortunately, the pricing scheme of the government fees and complicated registration scheme - including issuing each design of the application with a separate registration number - will largely negate any potential benefit of filing multiple design applications.

Official Fees
Government fees for filing an application have more than doubled to $200 per application, or $200 per design in a multiple design application.

Registration without Examination
The examination scheme is similar to that for innovation patents under the Australian Patents Act.

Whereas under the old Act design applications are examined before registration, under the new Act design applications will be examined for formalities upon filing of a request for registration, which must be filed within 6 months of the priority date. No substantive examination of validity of the design will be carried out prior to registration, though the registered owner of the design has the option of requesting examination after registration. The owner cannot threaten or commence action for infringement of the registration unless the registration has passed examination.

If objections raised during examination are not overcome, the design registration will be revoked. If no objection is raised, or any objection is overcome, the Registrar will issue a certificate of examination for the registration.

A third party may file a request for examination accompanied by one half of the examination fee, with the other half payable by the owner, or the Registrar may examine a design registration of his/her own initiative. A third party may also provide the Registrar with copies of prior art material.

The owner may request publication of the design instead of registration. Publication will give no rights in the design, but will merely place the design on the public record. We do not expect that this provision will be commonly invoked.

Infringement
Design infringement action may be commenced by the registered owner through the Courts only after a certificate of examination has been issued. Like the old Act, remedies available to the owner against the infringer include an injunction, and either damages or an account of profits. However the new Act also includes provision for the Court to award additional damages against a flagrant infringer.

As discussed above, the infringement test has been strengthened, with the intention of giving a broader design monopoly.

A new right of repair has been introduced for a component part of a complex product, whereby use of an otherwise infringing component part will not infringe if used to repair the complex product so as to restore its overall appearance. The working and impact of the right of repair provisions will be subject to review in the future.

HALFORD & CO.
June 2004