In February we published an update about the proposed Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Designs Bill). The Designs Bill proposed a number of material changes to Australia’s designs law. Click here to view the Proposed changes to Australian designs law paper. Broadly, the Designs Bill was introduced to provide more flexibility to designers during the initial stages of design protection and to simplify and clarify existing aspects of Australian designs law.
The Designs Bill received royal assent on 10 September 2021. The amendments set out in Schedule 7, Parts 1 and 2 of the Designs Bill commenced on 11 September 2021. These changes relate to the “familiar person” standard to be adopted in respect of designs comparison and enhanced grounds for revocation of a registered design.
The remaining Schedules of the Designs Bill will commence on 10 March 2022, including the introduction of a 12-month grace period.
New grace period
One of the primary changes being introduced is a 12-month grace period for filing a design application. This change will commence from 10 March 2022.
Currently, a registered design cannot be certified if it has been made public before applying for a design application. The grace period will allow designers a 12-month period to apply for design protection after publishing or using their design. This will help protect designers from inadvertently losing their rights in respect of a design as a result of publishing or using the design before filing for protection.
The grace period will also enable design applicants to use and “test the market” in respect of the relevant design before incurring the costs of design registration.
To be eligible for the grace period, the original publication or use of the design must have been by:
- The designer(s);
- The owner(s) of the design (if different to the designer, e.g., an employer);
- A party authorised by the designer or owner of the design; and/or
- A party who obtained the design without authorisation (e.g., if the design is stolen).
It is important to note that the grace period will not apply to publications made by the Registrar of Designs or any foreign designs offices.
Additional powers for the Registrar of Designs
From 10 March 2022, the Registrar of Designs will have the power to determine formal requirements for design applications. This will allow the rules to be easily updated as required.
IP Australia will conduct a consultation on a draft determination before the end of the year. If you wish to receive updates on the consultation process and information on how to make a submission, you can subscribe to IP Australia’s What’s New newsletter.
We will also provide an update once further information becomes available.
Renewal of registration of design
This change clarifies the status of registered designs that are renewed during the renewal grace period and provides that the registration of the design does not cease during the renewal grace period. This change will commence from 10 March 2022.
The Designs Bill also introduced a number of other changes, which design owners should familiarise themselves with. For further information regarding these other changes, please refer to the Proposed changes to Australian designs law paper.
For any more information on the amendments to the Designs Act or any questions, please contact Karen Anne Hayne of our intellectual property team