Proposed changes to the Australian designs law – what you need to know

What is a registered design?

A registered design right protects the overall visual appearance of a new and distinctive product such as shape, colour, configuration, pattern and/or ornamentation. However, a registered design does not protect the function of a product – only its visual appearance.

The current Designs Act 2003 (Cth) contains a number of provisions which hamper Australia’s design law regime and in 2015 the Advisory Council on Intellectual Property (ACIP) put forward a number of recommendations to IP Australia, including changes to improve Australia’s design laws.

In December 2020, after many years of review and consultation with key stakeholders in the industry, and after IP Australia’s response to the ACIP report, the long-awaited Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020 was brought before Parliament and is currently under consideration.

A number of important changes have been recommended, including:

  1. a 12-month grace period to apply for design protection after publishing or using the design – This is likely to be the most significant change.  Previously, as soon as a design was published or disclosed, it was too late to file an application for design protection.  The proposed amendment will allow a 12-month grace period to file a design application which provides protection for any early or inadvertent disclosure of the design.
  2. Prior use defence – This provides an exemption from infringement by third parties who use the design after its disclosure but before a design application is filed. 
  3. Removal of publication option and automatic registration of a design application 6 months after the filing date – This is intended to streamline the process and make it easier for applicants.  Designs will be automatically published once registered.
  4. Relief from infringement before registration – This proposed amendment provides relief for an infringer who was unaware of the design until it was registered. 
  5. Right of exclusive licensee to bring infringement proceedings through the courts – Introduction of this change will bring the designs law in line with other IP laws in Australia.

The proposed amendments are still under consideration and it is likely to be end of this year before we hear anything further.

If you have any questions on your designs or have any questions on the above, please contact one of the brandU Legal Team.