Enhancing Australian Design Protection

We welcome the option to introduce virtual designs also in Australia. Such virtual designs (e.g. in metaverse environments) and in particular also two-dimensional icons as well as (static and animated) graphical user interfaces (GUI) play an increased role nowadays and IP right holders should be given adequate means to protect their intellectual property.
Protection for at least some of these subject matter areas, such as in respect of GUIs and icons, is already possible in a number of other design registration regimes around the world. When introducing such virtual designs, IP Australia might want to consider reviewing in particular the protection the EU regime has been offering to IP owners for many years and the experience made since its implementation.
More information can be gathered for example in the EUIPO’s Guidelines: https://guidelines.euipo.europa.eu/2058424/1926295/designs-guidelines/4-1-3-icons--graphic-user-interfaces-and-the-like
https://guidelines.euipo.europa.eu/2058424/1926511/designs-guidelines/5-3-6-sequence-of-snapshots--animated-designs-.

We appreciate copyright laws around the world are not harmonized and even within the EU different approaches have been followed by different jurisdictions when it comes to the protection of designs by means of copyright.
We think that in general the established principles for “normal” / “non-virtual” designs should apply in the same way also for virtual designs. While we would not necessarily treat 2D and 3D designs in a different manner, we appreciate that local laws in Australia for “normal” designs might go down that route.
In any case, we cannot think of any immediate reason for the application of a different approach between “normal” and virtual designs, but local practitioners might have more insights on that point.

We cannot think of any immediate unintended consequences or adverse effects of this proposal.

We cannot think of any immediate alternative options.

We welcome and agree to the Office’s approach to protect partial designs.
Even if Australia is currently not Member of the Hague System, it would not only be an advantage for Australian designers, but would also simplify the application proceedings for foreign filers as in most countries the protection of partial designs is allowed.
It further provides a greater flexibility for designers to protect new parts of a specific product or focus on specific aspects of a design.

A good example is the so called “facelift” in the car industry, where the main part of the car remains the same but different parts are newly designed (see example taken from the Guidelines of the EUIPO; https://guidelines.euipo.europa.eu/2058424/2134481/designs-guidelines/5-4-use-of-visual-disclaimers-to-exclude-features-from-protection):

We also welcome the approach of using visual indicators and/or written claims in addition to representation to clearly indicate the part of the product the partial design relates to.
However, the Office should provide a binding and mandatory standard on how to use visual disclaimers and written claims.
Visual disclaimers should be allowed in the form of dashed, dot-dashed or dot-dot-dashed lines or, alternatively, in the form of shading, blurring or color shading.
Examples can be taken from the Design Guidelines of the EUIPO
https://guidelines.euipo.europa.eu/2058424/2134481/designs-guidelines/5-4-use-of-visual-disclaimers-to-exclude-features-from-protection,
the Common Practice (CP6) https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/who_we_are/common_communication/common_communication_7/common_communication7_en.pdf and the most recent GRUR submission
https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/12610-Intellectual-property-review-of-EU-rules-on-industrial-design-Design-Regulation-_en
We understand that using written claims are optional, not mandatory.
However, the use of circling or boundaries is ambiguous depending on the specific context.
The example provided in Figure 3 could give raise for uncertainties.
If the applicant wishes design protection for the ornamentation within the red rectangle, the applicant is required to provide a written claim.
However, if the applicant files the application without such a claim the entire representation of the bag with ornamentation is protected.
Without a mandatory and binding language on visual disclaimer, we doubt that applicants can determine what is protected or not.

We note that a registered design is infringed by someone making, or commercially dealing with, a product that embodies a design that is identical to, or substantially similar in overall impression to, the registered design.
For a product to infringe a registered design, it must be the product for which the design is registered. For example, a hairbrush could not infringe the registered design of a toothbrush.
As already mentioned with regard to question 4., we recommend abolishing this requirement and to clarify that the product name does not influence the scope of protection of the design.
Such protection would be limited only to the designs belonging to a specific sector.
We are in favor of the approach that the protection conferred by a registered design is to include any design, which does not produce a different overall impression.
That means that a hairbrush can infringe the registered design of a toothbrush if it does not produce a different overall impression.

The infringement test should in particular be applicable in case of partial designs, because if parts of the product are disclaimed, the protected part (“toothbrush head”) may be infringed by a different product (“hairbrush head”), see example of RCD No. 142054-0001 https://euipo.europa.eu/eSearch/#details/designs/000142054-0001

Yes, we agree with the Office’s proposal that the designs/copyright overlap provisions should apply to partial designs.
However, we would not treat three-dimensional (3D) designs (the shape and configuration of a product) differently from 2D designs and exclude them from copyright protection.
A product design or an element of a product design may, at the same time, be protected under copyright and design law if the requirement of “artistic work” is met.

We understand that a statement of newness and distinctiveness (SOND) can be filed with the design application.
A SOND is not required but can help the Registrar or the court to determine whether a design is substantially similar in overall impression to another design, in particular identifying particular visual features of a design as new and distinctive.
However, based on the assumption that SONDs are subjective and not supported by objective evidence (results of a prior art search, etc.), we agree that SONDs should be abolish.

No further comments here.

No further comments here.

We do, in general, support this approach as it enables designers to seek protection for their developments at an early point in time – and then to update / include any changes/developments made to the design since when it was pursued as part of the initial, provisional, design application.
However, we would see certain challenges in meeting the requirements for allocation of the priority of the main design and in assessing which amendments would be suitable/allowed under this regime. Some stakeholders, for example individual designers or SMEs, may not be able to determine if “the main design is substantially similar in overall impression to the preliminary design (as amended)”. Actually, even legal practitioners and experts might not be able to give a 100% save advice given lack of local case law and room for interpretation. Since there is often no “second chance” for design protection (due to novelty destroying disclosure), this approach might bear quite some risk.

Probably yes – but the use of this option would certainly depend on the circumstances of the individual case.

We do, in general, also support this approach as it enables designers to seek protections for their developments at an early point in time. This concept already exists in some territories around the world, such as in Japan. IP Australia might consider seeking advice from the JPO in view of their own experience with this approach.
However, we would see certain challenges or potential downsides.
One potential issue could be how to meet the requirements for allocation of the priority of the main design and how to assess which amendments would be suitable/allowed under this regime. Some stakeholders, for example individual designers or SMEs, may not be able to determine if “the subsequent design must be substantially similar to the main design or the design it is being linked to in the chain”. Again, even legal practitioners/experts might struggle (see above).
Further, the link between the two Australian design registrations would mean that the maximum term of protection for the second design registration would not be allowed to exceed that of the first Australian design registration. So effectively, using this linking process would truncate the maximum term of protection for the second Australian design registration. This, in itself, is quite a disadvantage, noting the maximum term of protection for an Australian design registration is only ten years from the filing date of the design registration.
Further, we see risks in the context of international filing strategies (see Q5).

Probably yes – but the use of this option would certainly depend on the circumstances of the individual case.

According to our understanding, the answer largely depends on the overall application strategy of the applicant.
As IP Australia correctly mentioned, an applicant using a preliminary application might face difficulties filing overseas for an updated version of their design. They may risk invalidity, if the preliminary design is considered prior art and taking into consideration that some countries have grace periods for publishing designs while others do not.
Therefore, the option of preliminary applications might rather be an interesting option for applicants that are exclusively interested in the local market. However, any applicant that is likely considering an international extension of their design protection, this option of preliminary designs may want to avoid using that route.

As discussed above, we see a number of challenges to applicants interested in extending their design protection internationally.

We understand that IP Australia is trying to help designers to get protection at a very early stage of the development. We wonder whether this aim could be partly achieved by introducing the option of “deferment of publication”. Under this approach (known, for example, in the EU and the UK), if the applicant makes such a request, a design application accepted by the office is not published for a certain period (up to 12 months in the UK and up to 30 months in the EU). During the unpublished period, the design already grants the owner limited protection against copying (despite no “full” exclusive rights).
The applicant could file an application for the “preliminary version” and request deferred publication. If the final version of the design is ready, an independent design application could be filed and published. The design for the “preliminary version” could be dropped at a later stage without ever getting published and thereby never becoming part of the prior art.
However, such dropping of the first design would not be necessary since the first design had not been published when the final version was filed, so protection could be sought for both the “preliminary version” and the “final version”. The advantage would be that the “preliminary version” has a better priority than the “final version” and might help in view of third party filings made after the filing of the “preliminary version” but before the “final version” (i.e. in the meantime) that – by independent parallel creation – are quite close to the “final version” and might destroy the novelty of the later “final version” or prevent the commercialization of goods using the design of the “final version”.

This option enables applicants to plan the market entry, to develop the production of the product or to develop alternative designs.
Another option is to rely on an unregistered Community Design that is established merely by the disclosure of a design and triggers protection for three years from the date of disclosure. Although an unregistered Community Design cannot be converted into a registered design, both rights can exist in the same design.
Within the “grace period” of one year, it allows you to test the market under the protection by way of an unregistered Community design (UCD) and then to register a registered Community design (RCD).