Schlich

October 2021

Overview

Although there are many similarities between Australian design law and that in the EU, the Australian system (“The Commonwealth of Australia’s Designs Act 2003”) has been somewhat outdated in comparison. For example:

• No grace period was available to designers.
• No prior user exemption to infringement was available.
• No right of an exclusive licensee to start legal proceedings was available.
• There was lack of clarity as to the informed user for assessing whether a design is distinctive (i.e. is deemed to have individual character).

Grace Period

The new grace period will provide designers with 12 months to apply for design protection after publishing or using their design.

Prior User Exemption

To overcome the reduced legal certainty for third parties arising from the above-mentioned grace period, a prior user exemption is provided to protect third parties against infringing someone else’s registered design if they started using their own design before the priority date of the registered design.

Rights of Exclusive Licensees

Exclusive licensees will have legal standing to take infringement action through the courts, so long as the design owner is made party to proceedings.

Clarity as to the Informed User

Australian law differed from EU law in that it required identifying a person “familiar” with the design product, as opposed to a potential user (when concerning registration and infringement matters). This has been amended now to make it clearer when assessing factors affecting whether one design is substantially similar in overall impression to another.

Conclusion

It is noted that a key difference still existing between Australian design law and that in the EU is that no protection is provided for parts of products (partial designs). Otherwise, the Australian design system appears to now correspond to that in the EU much more closely.

Changes to the standard of the informed user came into effect on 11 September 2021, while the rest of the key changes will commence six months from Royal Assent (i.e. on 10th March 2022). Importantly, however, the grace period will not be retroactive.

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