Australian Design Act 2003: Recent Changes in the Registered Design Legislation

Author: Ian Aldridge, Progressive Legal

The Australian Design Act 2003 (Cth) (The Act, Design Act) governs the registration of standard and innovative designs in Australia. This legislation outlines the necessary requirements for registering a design, as well as the rights and obligations of registered design owners.  

The Act also sets out the grounds on which a design can be infringed, and the remedies available to a design owner in such cases. A design is registrable if it is new and distinctive in comparison to existing designs at the time of filing the application for registration.  

In September 2021, the Design Amendment (Advisory Council on Intellectual Property Response) Act 2021 came into place to strengthen design rights in Australia. These changes promote innovation and provide enhanced protection for designers while supporting their creative environment.  

In this article, we will explore the key changes to the Design Act and their implications for designers, including the expanded rights for exclusive licensees, changes to infringement defences, and the impact on design registration and enforcement. 

What is a standard and innovative design?

A standard design is one that does not result from an “innovation”, whereas an innovative design is one that does result from an innovation. An innovation is defined as an original feature of shape, configuration, pattern or ornamentation which gives a special appearance to a product, setting it apart from similar products. To qualify for registration, an innovative design must also be new in relation to other published innovative designs worldwide before the design’s priority date. 

What are the key changes to the Design Act?

The main changes to the Act that have recently taken effect are: 

1. An extension to the grace period; 
2. The introduction of a test to determine prior use as an exemption for design infringement; 
3. A reduction to the length of the confidential period;  
4. Amendments to the innocent infringer defence in relation to designs that are not yet registered; and 
5. The grant of the right to bring infringement proceedings to an exclusive licensee. 

These amendments are discussed below in more detail.  

Grace Period

The new amendments introduce a 12-month grace period for designs that were not registered by 10 May 2021 but were used in Australia prior to that date. The purpose of this grace period is to give owners of unregistered designs the opportunity to register their designs without facing infringement proceedings.  

However, it’s important to note that the grace period doesn’t apply to designs that already have a registration or application filed before 10 May 2021, or to designs that have been commercially exploited outside Australia before that date.  

Furthermore, the amendments make it clear that using a design for product testing is not considered an infringement. These changes will provide greater certainty for businesses, prevent unfair exploitation of unregistered designs, and encourage the registration of innovative designs. 

Infringement exemption for prior use

The amendment also introduces a test to determine if a design is being used for market testing purposes in Australia within a reasonable period before the design’s priority date. This test is satisfied if:  

(a) The user is the first owner or licensee of the design in Australia;  

(b) On the date of first use, no other person has used, or made known their intention to use a comparable design in Australia; and  

(c) The user has not disposed of any product bearing the design, except through retail sales in Australia.   

Where a design is found to be comparable, the infringer will need to show that their use of the design predates the priority date of the earlier design. However, this test does not apply if the user can prove that, at the time of disposal, they had honest and genuine intentions to resume using the design in Australia within 12 months after the disposal. This amendment will ensure that prior use can only be used as a defence when genuine market testing is involved, providing improved protection for registered designs. 

The test aims to strike a balance between providing adequate protection for designs and ensuring that businesses are not unnecessarily hindered by restrictions on their ability to test new products and designs in the market. 

Registration of designs—removal of publication option

Previously, applicants could choose to keep their design confidential for up to 6 months after registration, but this is no longer possible under the amended law. The design confidential period has been shortened from 18 months to 6 months from the date of design registration.  

The design registration must be published within this 6-month period to enable the design to be registered. However, a deferral of up to 6 months may be granted on request. If the design is not registered within the deferral period, the design registration lapses and is taken to have never been registered. Applicants who do not want their design to be published immediately upon registration will need to amend their application accordingly. 

Relief from infringement before registration

The recent amendments to the Act bring changes to the innocent infringer defence concerning designs that are not yet registered. The Act also provides for pecuniary relief to be awarded where a court is satisfied that an infringement was innocent. 

Previously, the defence only applied where the design was registered at the time of the infringement. However, the amending Act extends this defence to unregistered designs, provided the design is registered within 12 months of the infringement occurring. 

Additionally, the amending Act also places the onus on the infringer to demonstrate that they were unaware and could not reasonably have been aware of the design’s existence. This is a reversal of the previous requirement for the design owner to prove the infringer’s awareness. 

These amendments will provide enhanced protection for designers and ensure that those who innocently infringe designs are not unfairly penalised. 

Right of exclusive licensee to bring infringement proceedings

The recent amendments now give an exclusive licensee the right to bring an infringement action in their own name. Previously, only the registered design owner had the authority to bring such action. 

An exclusive licensee is a licensee who holds a license granted by the registered owner of a registered design. This grants them exclusive rights in the design that surpass those of the registered owner and any other individual. 

This change gives exclusive licensees greater certainty and control over their designs, streamlining their ability to protect and enforce their rights. Furthermore, this change aligns with international best practices in the field.  

As an exclusive licensee of a registered design, you now have the power to initiate an infringement action independently. This means that if someone uses your design without your permission, you can take legal action without involving the registered design owner. 

Key takeaways

As we have seen, the Australian system of design rights has undergone some recent legislative changes. It is important for businesses to be aware of these changes and how they may impact their designs and products.  

The recent amendments provide protection for designs and help to encourage innovation by providing a mechanism for designers to protect their work from being copied without permission. The recent amendments to the Act provide additional protections for designers and make it easier to enforce design rights.  

If you are interested in protecting your designs, or if you have been accused of infringing another designer’s work, please do not hesitate to get in touch with our team of IP lawyers by calling 1800 820 083 or by filling out the contact form on this page.