Exposure Draft Designs Legislation Released

The Australian Government has released an Exposure Draft of the new designs legislation. This is a result of a five year study of Australian industrial designs and related laws by the Australian Law Review Commission (ALRC), in consultation with the Designs Office, the patent attorney profession and the public. The Draft generally follows the various recommendations by the ALRC and the Government’s response to those recommendations.

Some of the more significant proposed changes include:

• A reduction in the term of a design from 16 to 10 years.
• The test for registrability will relate to a design that is both "new and distinctive" when compared to the prior art. This is to be contrasted with the present legislation where the design may be either "new or original".
• The prior art base is to be expanded to include designs published anywhere in the world before the priority date, rather than merely designs used in Australia before the priority date which is presently the case.
• When considering distinctiveness, or any substantial similarity in overall impression with prior designs, the standard to be considered is to be that of the "informed user". This is a departure from current practice where the standard is the "eyes of the court".
• A design application will need to be accompanied by a statement regarding its distinctiveness. It is anticipated this statement will be similar to the present "Statement of Monopoly".
• A single design application for a "set of articles" will no longer be available, but it will be possible to file an application incorporating a number of articles in respect of a "common design".
• Design applications will be examined only as to formalities and thereafter may automatically proceed to registration. Substantive examination may be requested at any time by any person or a court. Significantly, and in contrast to present legislation, the Registrar of Designs will have the right to revoke a design if, on the balance of probabilities, a ground of revocation has been established during the course of examination. There will be a right of appeal to the Federal Court in such cases.
• The test for infringement will be altered in line with the test for registrability. Infringement will occur where a product embodies a design that is either identical or substantially similar in overall impression to the registered design. Again, such issues are to be considered from the point of view of the informed user. This is a departure from the present test which requires an "obvious or fraudulent imitation".
• One departure from the Government's response to the ALRC recommendations, is that it has now decided to exclude spare parts from design protection. This proposal was noted by the Minister in his press release regarding the Exposure Draft, although the later includes no details of the proposal. A further exposure draft containing such details is expected to be released for comment prior to any Bill being read before Parliament.

Until such time as a number of court decisions have been handed down and registrability, it is unclear as to how the new tests for infringement will differ in practice from the existing regime.

Given the uncertainty regarding the spare parts issue, and in view of the pending Federal election, we believe it unlikely the new legislation will come into effect in 2001.