Designs Amendment (Advisory Council on Intellectual Property Response) Bill 2020

Response 989554755

Back to Response listing

Introduction and Privacy Policy

2. Do you consent to having your submission published?

Please select one item
(Required)
Yes
Ticked Yes but I would like to remain anonymous
No

Survey on the draft legislation

1. Do you have any comments on the drafting of Schedule 1 and 2 which introduces a twelve month grace period and an infringement exemption for prior use during that period?

Do you have any comments on the drafting of Schedule 1 and 2 which introduces a twelve month grace period and an infringement exemption for prior use during that period?
Yes, I believe the prior use defences are too extensive and will erode the Design Applicant's rights as well as the efficacy of the infringement process and will result in a reduced number of design registration filings.

Questions asked in the Explanatory Memorandum

2. Under s 13(1)(b), where a person creates a design in the course of employment, or under a contract with another person, the person entitled to registration is the employer or the other person under the contract. If the employee/contractor designer were to publish or use the design, would that disclosure be covered by the grace period, either by treating the designer as a “predecessor in title”, or under doctrines of agency, or otherwise? If not, is this a problem?

Under s 13(1)(b), where a person creates a design in the course of employment, or under a contract with another person, the person entitled to registration is the employer or the other person under the contract. If the employee/contractor designer were to publish or use the design, would that disclosure be covered by the grace period, either by treating the designer as a “predecessor in title”, or under doctrines of agency, or otherwise? If not, is this a problem?
4. Given that a number of members of a design team may have input into and access to a design in the development process prior to registration, it is important that the acts of employees or contractors be imputed as the act of the company where the registered owner is a corporation.

5. Will the subsection effectively simplify proof of derivation for registered owners of designs? Does it strike an appropriate balance between facilitating proof for registered owners and permitting rebuttal by third parties? Are there any unintended consequences, or gaps in proof for registered owners?

Will the subsection effectively simplify proof of derivation for registered owners of designs? Does it strike an appropriate balance between facilitating proof for registered owners and permitting rebuttal by third parties? Are there any unintended consequences, or gaps in proof for registered owners?
5. The most common defence to an act of infringement that we experience is that the copy is not identical or substantially similar in overall impression to the registered design. If an infringement application is brought before the court under the Designs Amendment Bill 2020 – following examination of the design – we query whether this rebuttal will change the order of proceedings in that the issue of whether a design has been copied instead becomes an issue of whether a design is registerable with the balance of proof being on the party rebutting the allegation.

7. We recognise that the amendments made by Schedule 2 do not provide relief from infringement for third parties for potential infringement that may occur between the filing and registration of a design

One option under consideration is to amend the Designs Act to expand the options for relief where a third party begin using a design between filing and registration. Do you have any comments on this approach?
6. The stated objective of IP Australia is to support innovation by encouraging investment in research and technology in Australian. However, by introducing the prior use defence concept under section 71(A)(3), IP Australia is enabling copiers with a list of infringement exemptions including that the infringer “took definite steps to offer to make a product in relation to which the design became registered…”

7. In our experience, infringers have generally relied on an argument of prior art invalidating a design certification or an argument that the designs are not identical based on a list of their dissimilarities. Awareness of registration has never been raised. Had any of the infringers been aware of a design registration before copying, we believe that they would have refrained from making the copy. Accordingly, by introducing the grace period and prior use defences, the end result will be to facilitate the copiers by opening up a broader range of defences available to copiers.

8. The provisions in 71A will provide further defences to infringers and lead to increased complexity for registered design holders prosecuting infringements and potentially more costly litigation.

9. It will also complicate the examination process. For holders of registered designs, the ability to have a design examined expeditiously is important as copiers can cause significant damage to a brand and swift action is required to protect the brand value incorporated in the registered design. Should the provisions of the prior use defence lead to extensive delays in issuing examination certificates and enabling holders of registered designs to commence legal proceedings, this will be harmful to the process and a disincentive to seek registration.

10. If IP Australia were to take this a step further by providing relief during the period between filing and registration, this would create further uncertainty for the design holder and would be a significant factor dissuading designers to apply for registration.