Australian Designs Act Changes: What Designers and Artists Need to Know

Designers and artists alike should be aware of the recent amendments to the Designs Act 2003 (Cth). There are some key points that could make a difference in your ability to register a design, or defend yourself if your design is substantially similar to another's.

Takeaways for designers and artists

You have more opportunities to apply for your design to be registered with the introduction of a 12-month grace period - You have more flexibility to create, publish and test designs - The introduction of expanded exemptions protect innocent parties that have created a substantially similar design.

What does the Designs Act do?

The Designs Act 2003 is the Australian statutory framework for the registration and protection of designs. Section 5 of the Act defines a design as “the overall appearance of the product resulting from one or more visual features of the product.” A visual feature includes “the shape, configuration, pattern or ornamentation of the product”, but does not include the materials used or the product’s feel. In other words, the Act establishes and protects rights in the aesthetic value of a registered design.

A 12-month grace period for applying for design registration

Previously, a design could not have been published before an application to register the design was made. ‘Published’ in the context of designs law means the public disclosure of a design. For example, if a designer were to take some work-in-progress shots in their studio and post it on their Instagram account, this could be considered ‘published’ for the purposes of designs law. If it had already been published, it would be deemed part of the “prior art” and not new and distinctive, thereby making the design registration unenforceable and limiting the capacity to test or market the design. Since 10 March 2022, a designer or owner of a design can use or publish the design up to 12 months before the priority date of a design and it will not be considered “prior art.”

Introduction of an infringement exemption for prior use

As a design now has 12 months to be registered and can be made publicly disclosed even if a designer intends to register, this has the potential to create uncertainty if other parties come up with a design that is identical or substantially similar to the original. Who then would be able to register their design? The introduction of this amendment exempts designers who independently create a design identical to or substantially similar to the original, or a design copied from a public disclosure from the designer within the grace period and before the priority date. This means that designs should still be registered as soon as possible to have full protection of the rights given under the Designs Act.

Expanded scope of the innocent infringement defence

This amendment expands the scope of the innocent infringement defence for third parties. Previously, the Act provided an innocent infringement defence “where a third party was unaware, or could not reasonably be aware a design is registered”. This defence has now been expanded to include an infringement to a design between the application filing date and registration date. Designs are not publicly available during this time so a third party would not know of a potential or actual infringement risk.

Right of exclusive license to bring infringement proceedings against third parties

Previously, exclusive licensees did not have the right to bring proceedings against third parties for infringement of the registered design. The introduction of this amendment allows the licensee to fully enforce their rights and recognises the harm they suffer from an infringement if the owner of the design chooses not to proceed with a claim.

What you need to do if you are affected by the Designs Act changes

If you would like further assistance or advice, email us at info@guestworkagency.art.