ALERT: Changes To The Designs Act 2003

Contents

There have been some changes to the Designs Act 2003 (Designs Act) which impact the way you will register designs. The biggest reforms to the Act consist of the following:

A twelve month grace period to register your designs
Automated registration
Streamlining of formal requirements.

There have also been other key changes, such as protection for third parties who have unintentionally infringed on a registered design.

The amendments have been adjusted so that they are more in line with the needs of creators today.. Businesses are more visible in an online world, but while this is advantageous, there is greater risk of losing your IP. Thus, it’s important for businesses owners to get ahead of this and ensure they are legally protected to avoid future catastrophes. One of the best ways to do this is to register your design.

Familarising yourself with the changes to the legislation is a great starting point, so you can ensure you’re compliant.

The changes to the Design Act have been effective since the 10th of March, 2022. The new rules will only apply to designs that have been submitted on or after this date.

What Are The New Changes To The Designs Act?

The design registration process now includes a grace period. The grace period allows designers a 12-month stretch before they officially register one of their designs with IP Australia.

This basically means that if a creator’s designs go public before they are able to register it and another party beats them to it, they are able to backdate the establishment of their design for a period of up to 12 months.

Example
Josh designs ergonomic water bottles and sells them online. Prior to his new collection dropping, the designs were leaked.

One of Josh’s competitors,Michelle, decides to copy the designs and have them registered before Josh. A few months later Josh goes to register his water bottle designs. Prior to the amendments to the Design Act, Josh would have lost the right to register his designs as Michelle had gotten there first.

However, the new amendments allow Josh a 12-month grace period where he is still able to register his water bottle designs, despite the leak.

How Has The Design Registration Process Changed?

The design registration process has become simpler. Six months after the priority date of the application, your application will move to a formalities check automatically. There is no need to make an additional request for registration.

Creators no longer have to worry about keeping tabs on their application – this gives you one less thing to do.

Example
If you have made an application to register a design, sometime after making the application, you would have to apply on top of that to make a request for registration.

The new amendments mean the process is now automated, so you don’t have to do this extra step. In six months, it will mechanically move to the formalities check.

If you wish to have your request for registration completed prior to the six month period, then you will need to apply manually.

What Other Formal Requirements Have Been Introduced?

Formal requirements regarding the application process have been amended to be more lenient. The rules and regulations that were originally set out are no longer rigid, so there is more flexibility for creative businesses. The purpose of this is to keep up with the changing technology and evolving needs of designers.

For example, there are changes around how drawings can be presented and what information should be included in an application. IP Australia has provided more detail around these changes.

What Counts As A Design?

‘Designs’ refer to the visual design of a product. In order for an item to be protected by the Design Act, it needs to be a distinct product design. It cannot be a logo, writing or a picture of something that does not depict an item.

Rather, it needs to be products, such as a lounge chair that has been designed by you, a unique wedding dress design, a BBQ set – the options are rather endless. IP Australia has listed these three requirements for an item to be protected by the Design Act:

Made by hand or manufactures
Be produced commercially
Have a physical form

If a product has met these requirements, then it can be protected by design rights.

What Is A Design Right?

A design right will protect the appearance of a product. This includes the shape, patterns, colour, arrangement, patterns or decorative elements. Anything that makes the product distinct in its appearance will be protected by the Design Act, and gives the creator of that product exclusive rights to that design

Example
Tim designs special ski socks. His designs are innovative in the sense they allow warmth, flexibility and also protect the feet from feeling wet if snow seeps in. Tim has distinguished them by adding a particular design.

As they fit the elements of being distinct, having particular colours, pattern and shape, Tim’s socks can be registered to be protected by the Design Act.

What Do These Changes Mean For Your Business?

The changes will not only mean greater protections for your designs, but also for you as a designer. The new amendments to the Designs Act allow mercy for designers who may have unknowingly infringed on others’ work.

If you have created a design that has managed to clash with another person’s design, the new amendments will protect you from infringement. The innocent infringement defense has been amended to include the dates where another party could not have reasonably known the design was registered to also consider the registration date and application process.

Likewise, the infringement exemption means that if you have used another designer’s work and were not aware they are about to register it during the 12 month grace period, you will not be accused of infringement. In this case, while a third party is aware the design belongs to another they are not aware of the creator’s intention to have the design registered. This provision ensures the twelve month grace period doesn’t extensively protect creators over potential third parties.

Additionally, the twelve month grace period can also be beneficial to your business for more than just design protection as it enables more freedom and less secrecy around products before it has been registered. Now, designers are more free to communicate their design with potential collaborators, marketers and even consumers while improvements are still being made.

The veil of secrecy can be lifted a bit to your product’s advantage.

What Else Can I Register As A Business?

If your business does not have a product that meets the requirements of a design, there may be some other forms of intellectual property that are applicable.

Trade Marks

Trademarks are a distinctive feature that is often associated with your business. A trademark is different from a design as it is not limited to a product. A trademark can be almost anything – a tune, a symbol, letter, number, colour, picture, name or a combination of these factors.

The definition of a trademark is broad,however, it must be distinct and unique enough in order for you to own it.

Plant Breeder’s Rights

Plant Breeders’ Rights is granted by IP Australia which allows exclusive commercial rights for a variety of plants that are registered. This can only apply to new varieties of plants or recently exploited, which means the plants have not been sold (with the consent of the breeder) for more than 12 months in Australia.

The idea of the plant breeders rights is to encourage more breeders and innovation among plant breeders.

If you have created a unique breed of plant, then you may wish to look into getting it registered and owning it through IP Australia. Our lawyers can help you obtain Plant Breeders’ Rights.

Patents

Patents provide exclusive rights for an invention. It can be applied for a method, process, device or substance. A standard patent can provide protection for upto 20 years.

Generally, patents allow you to:

Stop others from manufacturing, selling or using your IP without your permission
License the product for manufactures
Pursue legal action on people who are using your patent without authorisation

Key Takeaways

The amendments to the Designs Act has introduced some pretty significant changes to the way in which designs will now be registered. The grace period, changes to the application and registration processes will work to afford better protections to those who interact with product designs.

IP Australia provides a range of different registrations for creatives to protect their property. These include trademarks, copyright and plant breeders rights.

At Sprintlaw, we offer a number of consultations that can help with these areas:

If you would like a consultation, you can reach our legal consultants at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.

Sapna Goundan

Sapna has completed a Bachelor of Arts/Laws. Since graduating, she's worked primarily in the field of legal research and writing, and she now writes for Sprintlaw.

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