AU Designs Amendment Bill Enacted with Split Commencement

The Australian Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 was assented to on 10th September 2021 and was registered on 16th September 2021.

As previously discussed the associated Bill was read a first time in late 2020 following the adoption of the majority of the recommendations in the report by the Advisory Council on Intellectual Property.

For now the Amendment Act only changes the Designs Act 2003 with the following two amendments, which took effect and only apply to applications filed from 11th September 2021:

• replacing of the standard of the informed user with the standard of the familiar person;
• enabling a registered design to be revoked on account of the use of fraud or false suggestion when certifying the design in addition to on account of such use to obtain registration.

The rest of the Amendment Act will only change the Designs Act 2003 from the sooner of either (i) a single day fixed by proclamation, or (ii) 6-months and 1-day from the assent date of the Amendment Act – hence, 10th March 2022 by the latest. Those other provisions will be:

• replacing the current restricted 6-month grace period with a general 12-month grace period for relevant disclosures by the applicant or their predecessor or the creator of the design and for such disclosures by another entity who derived or obtained the disclosed design from those first mentioned entities;
• introducing a prior use exemption from infringement where another entity has prior used or taken definite steps towards using an otherwise infringing design and who did not derive or obtain the design from the applicant or their predecessor or the creator of the design;
• allowing publication to be deferred for up to 6-months by not selecting the registration option when filing;
• extending the innocent infringer relief so that it is available for otherwise infringing acts until the sooner of either registration or when the applicant notifies the innocent infringer. To be eligible for relief, an infringer has the onus of showing they did not know and could not reasonably be expected to know of the application disclosing the infringed design;
• allow exclusive licensees of a registered design to commence infringement actions against third parties in respect of infringing conduct subsequent to the commencement of the amendments;
• repealing the provisions which sets out the form that documents must take to be accepted for filing or publication, and instead allowing the Commissioner of Designs to issue non-legislative instruments to determine formality requirements;
• clarifying that a design is still active for infringement purposes provided it is renewed before the end of the renewal grace period, but that if it is not so renewed it ceases from the renewal due date.

Author: Quinn Miller

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