The Designs Act 2003, introduced 23 June 2004 aimed to make the registered designs system more attractive to use by Australian designers. Over the past nearly twelve years since enactment of the Act, applications for registered designs have increased from overseas applicants but are on a slow overall decline from Australian applicants.
Despite the change to automatic registration and subsequent elective examination, rather than automatic examination registration under the previous Designs Act 1906, the Designs Act 2003 has not proven popular. Most design Australian registrations are not renewed at the 5th anniversary renewal, suggesting either disengagement of users from the designs registration system or a general lack of need for design protection greater than 5 years. However, such a conclusion ignores the cost-benefit analysis of renewal cost versus only a maximum further 5 year term of design protection. Renewal of design registrations might be more prevalent if the maximum term of protection were longer, consistent with overseas design protection.
It is notable that Australia is not party to the Hague Agreement for international protection of designs.
The Productivity Commission’s (“The Commission”) Draft Report states that there is an absence of strong evidence that joining the Hague Agreement would be in Australia’s interests on a cost-benefit basis. In particular, The Commission states that extending the term of protection from 10 years to 15 years for commonality with other members of the Hague Agreement would be costly for Australia. The Commission recommends not extending the term or scope of protection. The European Union and many individual countries within Europe, and the USA, are party to the Hague Agreement.
Providing access from Australia into the only international design registration system, and the associated cost savings for Australian design owners seeking overseas design protection might well provide a much needed stimulus to energise use of the design registration system in Australia, and help turn Australia from a net importer of design registered products to a net exporter.
Introduction of unregistered design rights (UDR) into Australia, such as used in the UK and the European Union, may also help stimulate awareness and use of design protection. Typically UDRs provide automatic protection for a restricted period, usually around 3 years from first public disclosure/sale of the product bearing the design, and provide limited direct anti-copying protection. The Draft Report considers replacing registered design protection with UDRs, rather than augmenting registered design rights with an option for UDR. The Draft Report notes that UDRs require proof that copying has occurred, though the requirement for such proof is present in other regimes, such as copyright. The Draft Report also notes that some measures to address poor public understanding of designs law appear to have merit. Introduction of an unregistered design rights regime may well lead Australian designers to understand and utilise more formal registered designs.
The Draft Report also considers the possibility of adopting a grace period for designs disclosed prior to filing a design application, with a preference for a six month grace period rather than a 12 month period under the patent system. A grace period for designs would make the designs system more consistent with the Australian patent system.
Removing confusion over protection of single or multiple designs under the Designs Act 2003 has not been considered in The Commission’s Draft Report. Whilst the Designs Act 2003 does appear to allow registration of multiple designs in a single registration, Australian Designs Office practice is to restrict each registration to a single design, which forces multiple variations of a design concept to become individual design registrations or some designs will remain unprotected. This is roughly consistent with practice in the USA but inconsistent with European Union registered designs, which allows multiple designs in one application. A common approach between international offices could help reassure design registration users of consistency and give some cost predictability across jurisdictions.
Taking a limited and cost saving approach, the Commission’s Draft Report advocates few changes to design registration protection but does advocate increased education of the design system to stakeholders.