In our previous article, we discussed the Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 (Cth) that had been introduced into the Australian Senate to amend the Designs Act 2003 (Cth) ("the Act").
The Bill has since passed both houses of the Australian Parliament, and on 10 September 2021 received royal assent from the Governor-General. Of the amendments, now enacted into law, some have already taken effect whereas others are to take effect later.
Amendments already implemented, which took effect on 11 September 2021, comprise the introduction of:
- provisions whereby the standard of the "familiar person" applies in a comparison between a registered design and another design to assess validity or infringement of the registered design, making clear that the person (previously referred to in the Act as the "informed user") need not be a user of the product to which the registered design relates or similar products; and
- provisions whereby a court may revoke a design registration on the basis that a certificate of examination was obtained in respect of the registration by fraud, false suggestion or misrepresentation.
Amendments to be implemented later, which are to take effect on a day to be fixed by Proclamation or on 10 March 2022 in the absence thereof, include:
- introduction of a grace period whereby designs that are relevantly connected to a registered design owner and have been published (other than by an official registry) or used within a 12-month period immediately preceding the priority date can be disregarded in an assessment of whether the registered design is new and distinctive;1
- introduction of an exemption from registered design infringement for persons who have used or taken definite steps to use a comparable design before the priority date;
- removal of the option to publish (rather than register) a design the subject of a design application;
- removal of the requirement to submit an express request for registration in order to initiate formalities examination of a design application;
- affording courts an express discretion to impose reduced or no monetary relief in respect of innocent infringement (pre-registration);
- affording an exclusive licensee of a registered design standing to bring proceedings for infringement of the design; and
- enabling the Registrar of Designs to set formalities-related requirements for design applications/registrations.
We will provide a further update in due course.
1. The grace period provisions are not retrospective, applying only to prior-publications and uses occurring on or after their commencement date.
Originally published 14 September 2021
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