New Designs Law

May-June 2004

The Designs Act 2003 (“the New Act”), which replaces the Designs Act 1906 (“the Old Act”), will operate from June 17, 2004. All applications filed from that date will be governed by the New Act.

The New Act has been introduced following a number of failed infringement proceedings in Australian courts and the increase in concerns and criticisms by Industry.

The New Act significantly changes the current Australian designs law with major changes outlined as follows:

  1. The maximum term of registration will be reduced from 16 to 10 years.
  2. Under the old law, a design had to be “new” and “original” to be registrable. The New Act requires the design to be “distinctive” instead of “original”.
  3. The New Act adopts the test of “substantially similar in overall impression” than the test of “fraudulent or obvious imitation” in the context of both registration and infringement. The focus is now on “similarities” rather than “differences” between designs.
  4. The New Act provides that an application must be assessed against designs “publicly used in Australia” or “published within or outside of Australia” as opposed to designs “registered, published or used in Australia” under the Old Act.
  5. A design application can include multiple designs in relation to one product, or multiple designs relating to multiple products.
  6. The introduction of a defence called the “spare parts exemption”, where a person makes, imports, sells or hires component parts of a complex product for repairs.

The New Act provides that a design application is subject to a formalities check before the design is registered. This means that the design is registered without substantive examination. However, registration cannot be enforced until it is examined and certified by the Australian Designs Office.

For further information, contact Joe Lederman at BALDWINS, Australian Lawyers & Consultants.

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