Bills Digest No. 129 2002-03
Designs Bill 2002
This Digest was prepared for debate. It reflects the legislation as
introduced and does not canvass subsequent amendments. This Digest
does not have any official legal status. Other sources should be
consulted to determine the subsequent official status of the
Contact Officer & Copyright Details
11 December 2002
House: House of Representatives
Portfolio: Industry, Tourism and
provisions commence on Proclamation, or 6 months after Royal
Assent, which ever is the earlier.
The purpose of
the Bill is to repeal the Designs Act 1906 and redraft
that Act to provide a system of designs registration that includes
a reduced period of registration, stricter eligibility and
infringement tests, more streamlined registration and new
The Australian legal system offers protection to
'creators' through a variety of industrial and intellectual
property (IIP) regimes, such as patents, copyright, plant breeders'
rights, registered trade marks and designs. Typically these schemes
grant legal protection against imitators or 'free-riders', allowing
creators exclusive rights to exploit their creation, and
providing remedies for infringement of those rights. These rights
can be commercially valuable and the 'price' paid by creators for
this level of legal protection varies according to the regime in
Industrial and intellectual property protection
is primarily a matter of Commonwealth jurisdiction. At federation
the Commonwealth was given constitutional responsibility for
'copyrights, patents of inventions and designs, and trade
Domestic IIP law and policy is also influenced
by Australia's international obligations. Because the essence of
IIP protection is the grant of monopoly rights, the
interplay with competition law has become a particularly prominent
area of national and international policy debate.(2) As
a signatory to TRIPS(3), an international agreement
dealing with the trade-related aspects of intellectual property
rights, Australia is subject to minimum legal standards enforceable
by member states through the World Trade Organisation (WTO). For
example, Articles 25 and 26 of TRIPS deal with industrial designs
and include the following requirements:
Parties are to grant protection for
independently created industrial designs that are new or original.
The period of protection is to be at least 10 years.
Parties may exclude protection for designs
dictated by essentially technical or functional considerations.
Australia is a signatory to a number of other
international IIP agreements, which exist mainly because creators
frequently seek protection in more than one jurisdiction and
regulators must frequently measure the state of the relevant art
against international and not merely domestic standards.
The current designs legislation is almost a
century old and although it has been updated from time to time the
essential nature of what is protected remains largely unchanged.
The purpose of the Designs Act 1906 is to create and
protect the rights flowing from the design of manufactured
articles. Of all the legislative intellectual property schemes, the
Designs Act is the least utilised, and, it has been suggested the
The Designs Act creates a registration-based
monopoly for designs that are sufficiently new and original. Design
registration only protects the visual appearance of objects. A
design is defined as the features of shape, configuration, pattern
or ornamentation applied to an article that can be judged by the
eye. It does not include a method or principle of
construction.(5) Unlike patent registration, function is
not protected under the Designs Act unless it is incidental to
appearance.(6) For example, obtaining design
registration for the shape of a new product such as a video-camera
would, if valid, provide the designer with the exclusive right, for
a prescribed period, to stop others from applying that design to
video cameras or to any other manufactured product.
Monopoly rights in designs are only acquired by
registration under the Designs Act. They are not automatically
acquired on creation of the work as are the exclusive rights of
copyright. The maximum duration of the legislative monopoly is 16
years. Registration under the Act gives the owner (generally the
author or creator) of the design the right to bring an action
against someone who applies the design or an obvious or fraudulent
imitation of it; or who sells or hires any article to which the
design has been applied.(7) If a registered design is
infringed, a court may grant an injunction, damages or an account
Designs registration is intended to stimulate
inventiveness in the design field and the development of new
designs. A registration system enables the public, by searching the
register, to find out what can and what cannot be used as a design.
Designs are registered for an enormous range of articles including
machinery, electrical goods, marine goods, building materials,
sanitary goods, optical goods, jewellery and
Designs law involves striking a balance between
two competing goals. It must be sufficient to facilitate innovation
by prohibiting design free riding (which reduces the financial
returns to the designer), and it must facilitate innovation by
enabling the use of existing designs to create new ones. There is
necessarily a tension between these two objectives and it is
generally agreed that the equilibrium reached in the Australian
courts tend to favour the second of these goals. As a result a body
of designs law has evolved which, it is often argued, does not
provide adequate protection against designs free riding, and which
(although in a sense workable) is irrelevant to designs related
industry players and generally unsatisfactory.(10)
Designs protection has played a relatively minor
role in the overall scheme of intellectual property law in
Australia, but the Designs Act has been the subject of a number of
reviews and reports since 1973.(11) Despite significant
changes to the legislation in 1981 following the recommendations of
the Franki Committee(12), the legislation remains
controversial, and, many would argue, largely ineffective.
The Australian Law Review Commission has carried
out a major review of designs law. An Issues Paper was published in
April 1993, a Discussion Paper in August 1994, and a Final Report
in September 1995.(13)
Submissions and consultations to the ALRC review
revealed considerable dissatisfaction with the current designs
legislation. In particular:
- many considered that current designs law does not prevent
competitors from copying the substance of a design infringement is
- there was concern that design protection is of little value,
either to design owners or investors
- the courts have given too narrow an interpretation to what is
- design protection is sometimes not cost effective the
registration process is too slow and costly for the benefits of the
protection it provides
- there is confusion about the scope of current design protection
what exactly does it protect? only visual appearance? function?
safety features? all innovative features?
- some consider that the instances where design overlaps with
copyright or patent protection produce anomalous results, and
- there is a conviction that the system is under-used because of
The ALRC report stated that the strongest
criticism was that current designs legislation is inadequate to
prevent copying. This is because copying is only prevented if the
design owner can withstand claims that the registered design is not
new or original often a costly and legalistic issue. Design
disputes are not uncommon but very few infringements are
established when tested in court.(15) While applications
can take some months to process to meet the examination procedures,
the Registrar's examination is in fact limited and does not ensure
that the registration is valid. Overall the system does seem to be
under used industrial designs are pervasive yet there are
relatively few design registrations each year.(16)
In its final Report the ALRC made
recommendations which amounted to a complete overhaul of many
aspects of the designs law. Some of the more significant
recommendations were as follows:(17).
- a clearer, more up-to-date definition of 'design'
- a new, stricter threshold test for eligibility for protection
based on novelty and distinctiveness coupled with a broader
protection against infringement
- new examination procedures involving only a quick and cheap
formal examination when the application is lodged a more expensive
and time consuming substantive examination (ie to determine if the
design is new and distinctive) would only be necessary where design
registration is opposed or the applicant requests it
- a design registration period of 15 years, but requiring renewal
each 5 years(18)
- new options for challenging the registration of a design, for
review of the Registrar's decisions, and for enforcing design
rights - these options all emphasise cost effective and expert
- protection for spare parts under designs law should continue
but be subject to a special procedure for referring potentially
anti-competitive spare parts designs to the then Trade Practices
The Federal Government responded to the ALRC
Report almost four years later, in February 1999, and accepted the
great majority of the ALRC recommendations.(20) On 4 May
2001 the Designs (Exposure Draft) Bill 2001 was released for public
comment and the current Bill was introduced into the Parliament on
11 December 2002. The differences between the ALRC recommendations
and the Bill are discussed under the Main Provisions heading of the
The complex issue of how applications for design
registration of spare parts should be treated has been the subject
of much policy debate over recent years.(21) Spare parts
have economic features that can be distinctive from other products
protected by intellectual property law. It can be argued that when
spare parts (and particularly motor vehicle spare parts) are
protected under design legislation, producers who may not have
market power in a primary market for the complete goods may be able
to charge a monopoly price for spare parts in the aftermarket which
spare parts are sold. Apart from consumers being charged higher
prices for parts, competition may be restricted for the repair and
servicing of the original equipment.(22)
The Designs Act 1906 allows protection
for spare parts and the ALRC recommended that protection under
designs law should continue but be subject to a special procedure
for referring potentially anti-competitive spare parts designs to
the then Trade Practices Commission.(23)
The Government disagreed with this
recommendation, stating that it would further review the whole
issue of spare part designs. The Explanatory Memorandum to the Bill
provides considerable detail on a number of options for the
treatment of spare parts. These include:
- a blanket exclusion for all spare parts from designs
- a referral procedure to the ACCC(24)
- an interface exclusion where 'must fit' or 'must match'
parts(25) would be excluded from
- a compulsory licensing provision
- a list of proscribed spare parts to be excluded from
- a reduced term of protection for spare parts to five
The reader is referred to the Explanatory
Memorandum for a fuller discussion of these options(27)
but in short they raise issues regarding cost and complexity of
implementation. One of the underlying difficulties with spare parts
which these proposals do not resolve is the problem of
distinguishing between a product that can be both a spare part and
The Government has rejected all these options
and instead is proposing in this Bill a right of repair defence
against infringement.(28) The Explanatory Memorandum
states that the right of repair defence recognises that component
parts of a complex product can either be used as an original
product or as spare parts. The Government argues that this approach
seeks to strike a balance between providing an incentive for
creative activity in design and enabling competition in the spare
parts market.(29) The Government plans a review of the
spare parts exclusion provisions in 2005 and in the meantime it
proposes that IP Australia, in conjuction with the ACCC should
conduct a publicity campaign about the new designs registration
A considerable part of the Bill consists of
provisions that are substantially the same as those contained in
the Designs Act 1906 (the old Act). This Digest therefore
focuses on the provisions in the Bill that give an overview of the
system of design registration and reflect the more significant
The two principal elements in defining the scope
of what can be protected under designs law are the definition of
design and the innovation threshold or the novelty test.
Clauses 5-8 contain definitions
relevant to the Act. Central to the scheme of protection are the
definitions of 'design', 'visual features of a product' and
'product'. A 'design' means the overall appearance of a product
resulting from one or more visual features of the product
(clause 5). A product's visual features include
its shape, configuration, pattern and ornamentation but not the
feel or the materials used in the product. A visual feature may,
but need not, serve a functional purpose (clause
7). A product is anything that is manufactured or hand
made. A component part(31) which can exist separately is
itself a product but a part of a product is not. Things with
indefinite dimensions are products only under certain conditions
These definitions follow the ALRC recommendation
that the conceptual distinction between the design of a product and
the product itself be retained in simple terms a design for the
purposes of the Bill means the visual features of a product and not
the product itself.
Most countries' systems of designs registration
require a minimum standard of novelty on the basis that a designer
must make some advance on the prior art. Article 25(1) of the TRIPS
Agreement requires members to provide protection for:
Independently created industrial designs that
are new or original. Members may provide that designs are not new
or original if they do not significantly differ from known designs
or combinations of design features.
Section 17 of the old Act provides that only
'new or original' designs may be registered. The ALRC in its Report
stated that originality has never served a purpose in designs law
and in practice the courts and designs examiners have only applied
a novelty test. The novelty test was also considered unsatisfactory
because it provides little guidance about the degree of difference
required to constitute a new design where two designs are not
identical.(32) The Commission therefore recommended that
the new or original test should be replaced with stricter
eligibility requirements. Clause 15 implements
this recommendation and introduces a two-step threshold test for a
registrable design the design must be new and
distinctive(33) when compared with the prior art base as
it existed before priority date of the design. The prior art base
is essentially those designs publicly used in Australia and those
designs published anywhere in the world at the priority date
(subclause 15(2)). The priority date is usually
the date of filing (subclause 27).
Clause 16 sets out the
standards for 'newness' and 'distinctiveness'. A design will be new
unless it is identical to existing designs, and it will be
distinctive unless it is substantially similar in overall
impression to existing designs.
Clause 19 provides guidance for
determining 'substantial similarity in overall impression' and
stipulates that more weight is to be given to similarities between
the designs than to differences between them (subclause
19(1)). Other factors that the person (ie the designs
examiner or the court) must have regard to in determining
- comparison of the design to the prior art base
- the freedom of the creator of the design to innovate
- any features of the product which are specified in the
application for registration as being new and distinctive
(paragraph 19(2)(b)), (in the absence of any, the
person or court will regard the product in its entirety
- where only part of the design is substantially similar to
another design, particular regard to that part of the product must
be given, in the context of the product as a whole
In determining whether a design is substantially
similar, the person is to apply the standard of the informed user,
an informed user being the person who is familiar with the product
to which the design relates (subclause 19(4)).
This contrasts with the old Act where the design is to be ' judged
by the eye' and the relevant eye is that of the court. According to
the ALRC Report and evidence received by the Commission, this
subjective test has discouraged transparency and has resulted in
uncertainty in the likely results of infringement proceedings. The
'informed user standard' set out in clause 19
intends to implement an objective test in an attempt to introduce
more transparency and predictability into designs
law.(34) On the other hand it has also been suggested
that while it is important in designs law to assess the perception
of the person for whom the design is intended, it is probable this
will increase the cost of litigation by requiring expert evidence
to ascertain the standard of the informed user .(35)
Clauses 21-56 and 60-61 of the
Bill deal with the application and registration of designs. The
registration procedure proposed in the Bill is significantly
different to the current requirements. In simple terms, the purpose
of these provisions is to streamline the system so that an
application for a design will only be examined in the first
instance to check that it complies with formal requirements. The
examination of whether a design is new and distinctive (ie a
substantive examination) may be requested by any person but will
only be undertaken after registration of the design.
A person may file a design application in
relation to one or more designs and such an application must comply
with the prescribed minimum filing requirements (clauses 21
and 22). If the application meets the minimum filing
requirements the Registrar of Designs must:
- give written notice to that effect stating amongst other things
the filing date(37) of the application
(subclause 24(1), and
- publish prescribed details of the application (clause
The Registrar must also notify the applicant if
the application does not meet the minimum filing requirements
(subclause 24(2). A design application will lapse
if the application fails to comply with the requirements of the Act
and regulations (clause 33).
Requests for registration or publication of
designs must be included in the design application and made in
accordance with the prescribed requirements (clause
35). Applications may include more than one design and
more than one request for registration and publication. Further the
application may be for registration of some designs and publication
of others (subclause 36(1)).
The Registrar must register a design if:
- the prescribed formalities for registration are all
- the design is not precluded from registration by virtue of the
prohibitions in subclause 43(1)(38),
- where the design is a common design to more than one product,
the Registrar is satisfied the design is a common design for each
product (clauses 39 and 40).
Where the application discloses several designs
that are to be registered for several products, those products must
belong to the same class specified under the Locarno
Agreement(39) (paragraph 40(2)(a)).
If the Registrar is not satisfied with the
design application then he/she must give the applicant an
opportunity to correct it (clause 41). If the
applicant fails to respond to this opportunity or if the Registrar
is not satisfied with the response then he/she must refuse to
register the design under subclause 43(2). Where
the Registrar refuses to register a design, he/she must give the
applicant written reasons for the refusal (subclause
43(3)). A decision to refuse registration is reviewable by
the Administrative Appeals Tribunal (clause
To register a design the Registrar must enter
particulars of the registration in the Register, issue a
certificate of registration and publish a notice stating the design
has been registered. (clause 45).
The term of registration of a design is an
initial 5 years with ability to renew for an additional 5 years, ie
a maximum of 10 years (clauses 46 and 47). The
term of registration runs from the filing date (clause
The 10 year registration period contrasts with
the old Act where the initial period of registration is for one
year with a possible extension of up to 15 years. It is of note
that the ALRC recommended that design registration be available for
three discrete periods of 5 years (ie a maximum of 15 years). The
Government has justified the reduction to 10 years on the basis
that TRIPS provides a minimum registration for industrial designs
for 10 years. The Explanatory Memorandum states that it would not
be in Australia's interest to provide a period of registration in
excess of its international obligations as Australia is a net
importer of intellectual property.(40) In contrast, the
ALRC recommended retention of the 15 year registration period on
the basis that:
There is little basis for any change to the
duration [ ] Nor is there an international consistency. Protection
varies from 10(41) to 15(42) or 50
years(43). The Hague Agreement requires 15 years
protection. Ultimately the possibility that Australia could join
the Hague system has persuaded the Commission to recommend 15 years
protection. The majority of submissions supported this
recommendation whereas the TRIPS agreement mandates a term of 10
The Hague Agreement referred to in the ALRC
report is the Hague Agreement Concerning the International
Deposit of Industrial Designs. Under this Agreement an
industrial design owner in one of the member states can obtain
protection for his design in some or all of the other members by
filing a single international application with WIPO(45).
The resulting international registration is published by WIPO and
notified to all the designated countries. If a country does not
expressly refuse protection within a specified period, the design
is automatically protected in the country
While Australia is not a party to the Hague
Agreement, it is of interest by way of comparison, that Australia
has recently joined a similar arrangement for international
registration of trade marks under the Protocol Relating to the
Madrid Agreement Concerning the International Registration of
As discussed above, one the most significant
changes in the Bill is that design applications will not be
examined before grant. After a formalities check, the application
will proceed to grant and to publication. Essentially design
registration will be granted if the forms are correctly completed
and official fees paid.
Clauses 63-68 deal with
examination of designs after registration. Under clause
63 the Registrar is required to examine a registered
design on the request of any person (including the owner) or on the
order of a court. The Registrar may also initiate an examination on
his/her own initiative. Requests for examination may also be made
for designs whose registration has already ceased. A request for
examination must comply with the prescribed requirements and may
contain material relating to the newness and distinctiveness of the
design (clause 64).
In examining a design post-grant, the Registrar
must determine whether the design is registrable according to the
Act and regulations (clause 65). In other words,
the Registrar must determine whether the statutory requirements
such as novelty and distinctiveness are satisfied. If after
examination there are grounds for revocation then the Registrar
must give written notice to that effect to the owner of the design
(subclause 66(1)). The owner then has the
opportunity to request an amendment to remove the problem with
registration (subclause 66(3)), however such an
amendment must not alter the scope of the original design
registration (subclause 66(6)).
If after examination the Registrar decides there
are grounds for revocation and that the ground would not be removed
by amendment, then the Registrar must give the relevant parties a
notice stating that the registration of the design is revoked and
amend the register accordingly (clause 68).
Decisions to revoke a design can be appealed in the Federal Court
If the Registrar decides that no case of
revocation can be made out, a certificate of examination will be
issued to the registered design owner as evidence of the validity
of the design registration (clause 67).
Importantly, a design must have been examined
and a certificate of examination granted before the applicant can
bring an action for infringement (subclause
It is intended that post-grant examination will
speed up the grant of designs and may well limit examination to the
minority, mainly those likely to be subject to litigation. On the
other hand, it could be argued that pre-grant examination can alert
a designer to design validity issues and avoid grant of designs
that are clearly invalid.
The rights of owners of registered designs are
set out in clauses 10-12. Amongst other things the
owner of a registered design has the exclusive right to:
- make a product which embodies the design
- import, sell, hire or dispose of such a product
- authorise another person to do any of these things.
The registered owner may assign by writing all
or part of his interest in the design (clause
Under the old Act infringement occurs where
- applies the design or any fraudulent or obvious
imitation of it to any article in respect of which the design
- imports such an article into Australia for sale or use in trade
- sells or hires any such article.(48)
The ALRC noted that there has been a perception
that Australian court decisions have interpreted the term
'fraudulent or obvious imitation' so narrowly that design owners
are protected against only virtually exact copies. Consequently it
is easy for competitors to avoid infringement by changing features
which make the design appear visually different but are
commercially or functionally insignificant. (49)
Following the recommendations of the ARLC, the
concept of infringement by imitation is removed in the Bill, and
replaced by the 'substantial similarity' test, ie the same test
used to determine eligibility of a design for registration.
Clause 71 sets out how a person
will infringe a registered design. Infringement occurs if a person,
without licence or authority of the registered owner:
- makes a product to which the design is registered, or which
embodies a design that is identical to or substantially similar
in overall impression to the registered design
- imports such a product into Australia for trade or
- sells, hires, or otherwise disposes of such a product
- uses such a product for trade or business
- keeps such a product for doing any of the above.
In determining whether a design is substantially
similar in overall impression to the registered design, a court is
to consider the factors specified in clause 19 (subclause
71(8)). For example, the court would be required to give
more weight to the similarities between the designs rather than to
the differences. The court would also have regard
to the state of development of the prior art base for the design,
the freedom of the creator of the design to innovate and any
features of the product which are specified in the application for
registration as being new and distinctive. In making this
assessment the court would apply the standard of the informed user,
that is, the person who is familiar with the product to which the
As more weight is to be given to the
similarities than differences, products which have incorporated
salient features of the registered design, and are otherwise very
similar to the registered design, apart from slight differences,
are more likely to be held to be infringing products under the test
in the Bill, than under the current fraudulent or obvious
imitations test in the old Act.
Subclause 72(1) of the Bill
provides a defence against infringement of a design where a
component part embodying a registered design is used for repair
purposes (ie spare parts) without the authorisation of the design
owner. To avoid infringement the complex product (ie a product
comprising at least 2 spare parts) needs to be repaired and to have
its overall appearance restored in whole or in part by the use of
the component part. However, there is no defence against
infringement where the use of a component part embodying a design
results in the enhancement of the appearance of the complex product
Subclause 72(2) provides that
the onus is on the owner of the design to prove that parts were
being used for non-repair purposes.
Subclause 72(5) defines the
term repair to include:
- restoring or replacing a faded or otherwise deteriorated or
decayed component part
- replacing incidental items at the same time as a damaged
component part is being repaired or replaced
- maintaining the complex product by replacing component parts
during a routine maintenance program.
- The Explanatory Memorandum states that upgrading or enhancing
the look of the complex product would not be considered to be a
repair. For example, adding accessory items that are protected by a
registered design in order to enhance the appearance of the complex
product, would not fall within the scope of the term repair
Clause 73 provides that the
owner of a registered design can bring proceedings in prescribed
courts(51) or in another court with jurisdiction.
Significantly, infringement proceedings cannot be brought until the
design has been examined and a certificate of examination has been
issued (subclause 73(4)).
Remedies for infringement are set out in
clause 75 and include injunctions, damages and an
account of profits. This clause essentially replicates provisions
in the old Act.
Clauses 77-81 provide for relief from
unjustified threats of infringement proceedings and correspond to
the provisions in Division 2 of Part V of the old Act.
Clauses 83-89 deal with the
jurisdiction of the courts and correspond to the provisions in Part
VIB of the old Act.
Clauses 90 and 91 provide for
court to grant compulsory licences for registered designs under
certain circumstances and clause 92 provides for
the revocation of a registered design where the design is the
subject of a compulsory licence. A compulsory licence is a
non-exclusive licence granted to a specified person to make, import
or sell products embodying the design. A compulsory licence will
only be granted where the design has been used outside Australia
and where the owner of the design has given no satisfactory reason
for failing to use the design in Australia and will not grant the
applicant authorisation on reasonable terms for its use in
A person may apply for a compulsory licence only
after the registered design has been examined and has been found
valid (subclause 90(2)).
There are corresponding provisions regarding
compulsory licences in the old Act which the ALRC recommended
should be removed(52). The Government disagreed with
this recommendation stating:
[it] considers compulsory licensing maintains
the checks and balances in the system. The government also believes
the fact that Australians have never used the compulsory licensing
provisions is insufficient reason to remove them. Further, the
provisions could also address concerns expressed by agencies such
as Treasury and the (then) Industry Commission over the potential
for anti-competitive effects flowing from design protection, as
acknowledged by the Commission.(53)
Clauses 96-107 essentially
replicate Part VIA of the old Act. They provide for the
Commonwealth, the States and the Territories to use registered
designs for their purposes, for the Commonwealth to acquire a
registered design and for the Registrar of Designs to prohibit or
restrict the publication of information about a design. By way of
background, the ALRC had recommended that Part VIA of the old Act
should be removed on the basis that there was no demonstrated need
for these Crown use provisions.(54)
The Government, in response, stated that it
disagreed with this recommendation:
[ ] as it considers it is important that it
maintains a discretion to use a design, subject to payment of
compensation, for reasons including possible defence and security
needs. Many Commonwealth and State agencies support retaining the
crown use provisions and they are consistent with other
intellectual property legislation. The government also considers
the reason the Crown use provisions have never been used is
insufficient justification for their removal, indeed their
existence may have acted as a lever in negotiations for ensuring
cooperation from design owners.(55)
The Bill provides for publication of designs as
an alternative to registration. Whereas registration gives the
creator an exclusive property right in the design, preventing
others from applying it, publication gives the creator a guarantee
that, while others may apply the design, they may not register it
for their own exclusive benefit. Publication is intended to deal
with situations where exclusive property rights, and the cost of
acquiring and enforcing them, hinder rather than assist the
application of designs.
As discussed above, requests for publication of
a design must be included in design application and made in
accordance with the prescribed requirements (clause
35). Clauses 57-59 set out the
requirements for publication of designs. Essentially the Registrar
must publish a design if satisfied that the formal prescribed
requirements for publication have been fulfilled. However, it is of
note that the Bill is silent on the rights of the applicant for a
published design. In contrast to registration, there are no
eligibility tests(56), there is no post grant
examination and no process for infringement proceedings in relation
to publication. The only explanation of publication of a design is
in the Bill's Explanatory Memorandum which states:
Publication does not give the applicant any
exclusive rights in the design, but will prevent other persons from
obtaining exclusive rights in the design allowing all persons to
use the design without infringing it. Publication may be of
advantage to those industries developing large numbers of
short-lived designs for which registration could be too costly, for
example, the textile industry.(57)
The ALRC report made the following
recommendation in relation to publication of designs.
An optional publication or registration system
should be introduced into the new designs legislation. At any time
within six months from the priority date a person who has filed an
application for registration can request publication or can seek
formal examination and registration of the design. Choosing
publication should not entitle a person to an exclusive property
right but it should have the effect of preventing other applicants
from obtaining priority. If no election were made within the
six-month period the application should be regarded as
The Government, in its response accepted this
Clauses 122 to 128 are
administrative provisions and correspond to sections 8-10 of the
Amongst other things they:
- establish the offices of Registrar and Deputy Registrar of
Designs and provide for their powers and functions (clauses
122 and 123)
- establish the Designs Office (clause 125),
- empower the Registrar to delegate his or her powers or
functions to prescribed employees (clause
Clause 130 corresponds to
section 42 of the old Act and deals with fees to be paid with
respect to designs. Amongst other things it provides that:
- the regulations may prescribe the fees to be paid, and
- failure to pay the prescribed fees will result in a design
Clauses 131-135 establish a
number of offences relating to designs registration including:
- Making false entries in the Designs Register (maximum penalty:
imprisonment for twelve months) (clause 131)
- Making false representations that a design is registered
(maximum penalty: 60 penalty units) (clause
- Failing to comply with requirements of the Registrar in regard
matters such as answering questions and providing documents
(maximum penalty: 30 penalty units) (clause
- Trafficking in registered designs by employees of the Designs
Office (maximum penalty: 60 penalty units) (clause
- Making false representations about the Designs Office (maximum
penalty: 30 penalty units) (clause 133)
These offence provisions correspond to similar
provisions in the old Act, however in contrast, they are written to
reflect more modern drafting practices so as to harmonise with the
principles of criminal responsibility set out in Chapter 2 of the
Commonwealth Criminal Code.(59)
Clause 136 provides that a
person may apply to the Administrative Appeals Tribunal for review
of decisions of the Registrar in relation to matters including:
- refusing a design application
- refusing to register or publish a design, and
- refusing applications for an extension of time.
Clause 150 repeals the
Designs Act 1906 (ie the old Act).
Clauses 151-161 are transitional provisions to
provide for the continued operation of the old Act to deal with
certain registrations and proceedings commenced under that Act.
A significant part of the Bill is based on the
recommendations of the ALRC report, which itself was the product of
an extensive review of designs law. There appears to be general
optimism that the proposed reforms will go some way to making the
system of design registration more effective.
However, notably, in two major
areas(60), the Bill diverges from the ALRC
recommendations namely, in its treatment of designs embodied in
spare parts(61) and in the designated period of design
In relation to spare parts, it could be argued
that the Government did not fully canvass the ALRC's recommendation
of a referral procedure to the ACCC. It remains to be seen whether
the Government's alternative, namely a 'right of repair defence
against infringement', will be any less complex and costly and
further, the intention to review its operation in three years is
perhaps indicative of some uncertainty about the outcome.
The Government's rationale for the reduction in
the registration period from the current 15 year period to 10 years
seems unclear.(63) Given the ALRC's recommendation and
the possibility that Australia, at some later date, may wish to
participate in an international scheme of design registration based
on 15 years, the decision to reduce registration to a maximum
period of 10 years could warrant further attention by the
- Section 51(xviii) of the Constitution.
- For example, the Intellectual Property and Competition Review
Committee (IPCRC) conducted a major review of Australia's
intellectual property laws and their effects on competition. The
IPCRC was established under an intergovernmental agreement that
forms part of the National Competition Policy. The IPCRC issued its
Report to the Federal Government in September 2002. It includes
some discussion of designs registration.
- TRIPS is the acronym for Trade-Related Aspects of Intellectual
- J Phillips, 'International Designs Protection: Who Needs It?'
(1993) 15 EIPR 431; S Ricketson, 'Towards a Rational Basis for the
Protection of Industrial Design in Australia' (1994) 5 AIPJ 193.
- Designs Act 1906, section 4.
- ibid., section 18.
- Section 30.
- Section 32.
- James Lahore, Copyright and Designs, Butterworths
[Looseleaf service] para 60,005.
- Naomi Pearce, 'Towards a better test for infringement of a
registered design: the Designs (Exposure Draft) Bill,
Australian Intellectual Property Law Bulletin, v. 15, no.
3, August 2002, p. 29.
- Designs Law Committee, Report on the Law relating to Designs,
Canberra, AGPS, 1973 (Franki Report); J Lahore Inquiry into
Intellectual Property Protection for Industrial Designs, Canberra,
1991; Industrial Property Advisory Committee, Practice and
Procedures for Enforcement of Industrial Property Rights in
Australia, Canberra, 1992; ALRC Australian Law Reform Commission,
Reform No 74 - Designs, Sydney, 1995.
- Franki Report, ibid.
- Australian Law Reform Commission, Reform No 74 -
Designs, Sydney, 1995.
- ibid., para 2.39.
- Submissions to the ALRC inquiry suggested that between 1980 and
1991, only 30 per cent of infringement proceedings were successful;
between 1986 and 1993, that figure was stated at less than 10 per
cent; and between 1993 and 2000, 36 per cent of infringement
proceedings were successful at trial. (Quoted in Naomi Pearce,
op.cit, p. 30.)
- Australian Law Reform Commission, op.cit, para 2.41.
- Australian Law Reform Commission, Media Release, 1
- This recommendation was rejected by the Government. See page 5
for a fuller discussion.
- This recommendation was rejected by the Government. See page 5
for a fuller discussion of spare parts.
- Government response is available at:
- The treatment of spare parts under the designs registration
system has been examined previously in reports of the Industry
Commission, the Bureau of Industry Economics, the ALRC and most
recently the IPCR Committee.
- Review of Intellectual Property Legislation under the
Competition Principles Agreement, p. 182.
- This recommendation was rejected by the Government. See below
at p. 5 for a fuller discussion of spare parts.
- This was the ALRC's recommendation which the Government
rejected on the grounds of cost and complexity.
- A 'must fit' part must fit or connect to another product to
enable either product to perform its intended function. A 'must
match' part is dependent on the appearance of another product of
which the product is intended by the designer to form an integral
- The ALRC's view of a 'must fit' and 'must match' exclusion was
that definitions of that kind are arbitrary, covering categories of
spare parts that do not have any anti-competitive effect. 'It
promotes litigation rather than reducing it.' ALRC op.cit, para
- Explanatory Memorandum, paras 27 91.
- For further explanation see p. 11 of the Digest, clause
72 of the Bill.
- Explanatory Memorandum, paras 84 85.
- ibid., paras 85 86.
- Component parts embodying designs that are used for repair
purposes (ie spare parts) are to be treated differently. See pp. 5
and 11 of the Digest for further explanation.
- ALRC, Report, para 5.5.
- ALRC Recommendations 30 and 32.
- Naomi Pearce, Op. cit, p. 32.
- Allens, Arthur, Robinson, 'Designs Bill 2000', located
- Publication of a design is discussed in more detail below at p.
14, however publication is referred to at this point because design
applications may be made for both registration and publication
- The filing date is important because the term of registration
of any design is generally counted from that date (see
- Subclause 43(1) prescribes the categories of
designs that cannot be registered. These include designs protected
under the Olympic Insignia Protection Act 1987; integrated
circuits as defined in the Circuit Layouts Act 1989;
restricted designs that affect the interests of the defence of the
Commonwealth, and designs prescribed in the regulations.
- The Locarno Agreement is the Agreement establishing an
International Classification for Industrial Design (clause 5).
- Explanatory Memorandum, para 16, p. 5.
- New Zealand, Japan, Ireland, Italy, Belgium, the Netherlands,
Luxembourg, Switzerland, Vietnam and Israel.
- ALRC, Report, para 10.7.
- World Intellectual Property Organisation.
- At 17 February 2003 there were 31 member states.
- The Protocol came into force in Australia on 11 July 2001. For
further background see the Bills
Digest for the Trade Marks Amendment (Madrid Protocol) Bill
2000 (Bills Digest No.20, 2000 2001).
- paragraph 30(1)(a) of the Designs Act 1906.
- Naomi Pearce, Op. cit, p. 31.
- Explanatory Memorandum, para 114.
- Prescribed courts are defined in clause 5 as the Federal Court
and the Supreme Courts of the States, the Territories and Norfolk
- ALRC Recommendation 162.
- Government response to ALRC Recommendation 162.
- ALRC report, para 7.26.
- Government response to ALRC Recommendation 75.
- Apart from the requirement that a design comply with the
legislative definition of a design.
- Explanatory Memorandum, para 40, p. 31.
- Recommendation No. 77.
- For an account of the background to the Criminal Code
and a brief description of Chapter 2 of the Code, see the Bills
Digest for the Environment and Heritage Legislation Amendment
(Application of Criminal Code) Bill 2000 (Bills Digest No.92,
- Other differences (eg Crown use and compulsory licences) would
appear to be less significant.
- See above at: pp. 5 and 11.
- See above at: pp. 9 10.
Mary Anne Neilsen
26 March 2003
Bills Digest Service
Information and Research Services
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