Redesigning the Designs Act

Significant proposed changes warrant input from industry 12 min read

IP Australia recently announced it is calling for submissions in relation to proposals that will change aspects of Australia's design system. The principal matters under consideration are:

• virtual designs
• partial designs
• incremental designs.

If implemented, the proposals will be significant for a number of industries, and some will affect other parts of Australia's design system.

The deadline for providing submissions on the proposals is 8 August 2023.

What is the proposal to protect virtual designs?

IP Australia proposes to introduce amendments to protect 'virtual designs', being 'designs for intangible (non-physical) things whose use results in the display of visual features through electronic means'. Under the proposal, IP Australia would seek to protect designs that are applied to things such as:

• graphical user interfaces (GUIs)
• animated icons
• virtual reality displays
• screensavers
• project interfaces and information
• augmented reality where digital elements are overlaid on real-world views
• products in a virtual reality environment.

Proposed mechanisms

IP Australia is proposing a number of mechanisms to achieve this objective, eg:

IP Australia has not provided any details on how the proposals would (or would not) apply to virtual designs that are already registered. This should be a key concern for current rights holders.

• Amending the definition of 'product' to include a 'virtual product', which would be defined to mean 'an intangible thing, the use of which results in the display of visual features through electronic means'. There are potential issues with this definition as it suggests it is the use of the product which results in the display of visual features through electronic means. In our view, a better definition for a virtual product would, for example, be: 'an intangible thing which is displayed as visual features through electronic means', given it is a design that is used in relation to a virtual product.
• Amending the definition of 'visual features' to expressly include 'visual features that appear for a limited time when the product is used in its normal way'.
• Requiring a design application, whether in respect of a physical design or virtual design, to clearly identify the product to which the design is applied so that a familiar person can determine the product's nature and intended use.
• Permitting a design applicant to choose the means by which they identify the scope of the design registration (eg by providing written statements alongside representations or showing the visual features of a product at different times, noting that the visual features might only be visible when used in the electronic device).
• Refining infringement provisions to exclude certain reproductions or reasonable use of virtual products (such purposes would, of course, need clear boundaries).

Whilst further clarification on the operation of virtual designs in Australia would be a welcome development, IP Australia has not provided any details on how, for example, the proposals would (or would not) apply to virtual designs that are already registered. This should be a key concern for current rights holders as their rights may remain uncertain.

Furthermore, IP Australia's proposal to require clarification for the product's nature and intended use, whether for a physical or virtual design (when physical designs are not part of the headline proposals), suggests that IP Australia is overextending its proposal to achieve more recent underlying policy objectives. The clarification of a product's nature and intended use may unduly curtail the scope of a design and overlook what a designer has actually invented. Hopefully shopping lists of products will not be required as part of IP Australia's proposals, and the teachings of the design remain paramount.

In addition, IP Australia has not proposed how it would seek to apply to the copyright/design overlap provisions in respect of virtual designs (if at all).

Further details on this proposal can be found in this fact sheet and consultation paper.

What is the proposal to protect partial designs?

IP Australia proposes to introduce amendments to protect 'partial designs', which would be defined to mean 'the overall appearance of a part of a product resulting from one or more visual features of that part of the product'.

Under the proposal, IP Australia would seek to protect designs in relation to the following things that are not typically manufactured separately from the entire product:

• parts of physical products, such as: collars of a shirt, handles for a mug, legs of a chair, heels of a shoe and bristles on a paintbrush
• parts of virtual products, such as icons in a graphical user interface on a smartphone.

Proposed mechanisms

IP Australia is proposing a number of mechanisms to achieve this objective, including:

• Amending the definition of 'design' to include 'partial design', which would be defined to mean 'the overall appearance of a part of a product resulting from one or more visual features of that part of the product'.
• Requiring the partial design to be embodied in a product—whether a physical, composite or virtual product.
• permitting the designer to apply for the design of the entire product and the design of one more or more of its parts in a single application to ensure that all designs share the same priority date, and possibly reducing the fees for the design applicant when this occurs.
• Permitting the designer to apply for a partial design in relation to multiple products in one or more Locarno classes.
• Requiring the design application to indicate the part of the product(s) to which the partial design relates, eg by using visual indicators in the graphical representations and/or using a written claim.
• Introducing a specific standard of clarity for all designs so that the scope of registration is clear to the familiar person considering the graphical representations (and accompanying material, such as a written statement).
• Requiring a design application, whether in respect of a partial design or design for the entire product, to clearly identify the product to which the design is applied so that a familiar person can determine the product's nature and intended use.
• Modifying the existing criteria for newness and distinctiveness in relation to partial designs. For example, IP Australia proposes to limit the prior art base for partial designs to designs or partial designs for products that are the same or 'similar to' the product(s) for which the partial design is registered, as compared to all products to which that design has been applied. This is different to the current approach with respect to entire products. Under the current system, the prior art base is not limited to any particular product. Under the proposed system, the 'similar product' test in the context of newness and distinctiveness will make it easier for applicants to register partial designs as compared to designs for entire products. IP Australia's justification for this difference is that the absence of the 'similar product' test 'could result in a very broad prior art base, making it difficult for designs to be certain that their partial designs can be protected. In our view, this justification is not particularly persuasive. Further, the test for assessing whether products are similar will be the equivalent to that which is used in the Trade Marks Act 1995 (Cth) for assessing whether goods are similar, except that the Registrar or court would apply the standard of a familiar person. Although case law is well developed in a trade mark context regarding the similarity of goods, it is likely that the 'similar products' test will lead to greater arguments between (at first) the examiner and design applicant, and (later) the design applicant and third parties, as to whether products are sufficiently similar. Additionally, IP Australia also proposes to modify the existing criteria for newness and distinctiveness by reducing the relevance of the unclaimed part of the product in the assessment of whether a partial design is substantially similar in overall impression to another design.
• Amending the test for infringement in respect of partial designs so that the infringing products could include any product that is 'similar to' the product(s) in the registration, with the court being required to focus on the part of the product equivalent to the registered partial design rather than the unclaimed part of the product in assessing the similarity in overall impression. IP Australia has not expressly specified the test for assessing whether products are similar in the context of infringement; however, it is likely that IP Australia is contemplating the same test it proposes in the context of newness and distinctiveness. Unlike in the context of newness and distinctiveness, the 'similar product' test in the context of infringement would actually widen the scope of products that could infringe the design and, therefore, give the design applicant greater enforcement rights. This is different to the current system where the infringement must occur in respect of the product which is the subject of the design.
• Applying the copyright/design overlap provisions in respect of partial 3D designs in the same way that they apply to 3D designs for whole products.

If implemented, IP Australia's proposal would also affect some aspects of the design system in relation to designs for entire products. For example, IP Australia proposes to:

• allow written claims in design applications for partial designs and complete designs in order to clarify the scope of protection
• abolish statements of newness and distinctiveness for applications for partial designs and designs for entire products insofar as they are filed on or after the commencement of any amending legislation
• abolish common designs in relation to more than one product (as IP Australia considers that common designs for entire products could be protected as partial designs for multiple products).

Further details can be found in this fact sheet and consultation paper.

What is the proposal to protect incremental designs?

IP Australia proposes to introduce amendments to allow designers to protect their designs as they develop their products throughout the design lifecycle.

One proposal is to introduce a 'preliminary designs' system, while another is to introduce a 'post-registration linking' system. IP Australia has stated that the proposals are not alternatives to each other.

Preliminary designs system

Key features of the preliminary designs system would be:

• Designers could file a low-cost preliminary application from which a main application with incremental changes could be filed within six months in order to claim the same priority date. The changes would be treated as incremental if the preliminary design and the main design were substantially similar in overall impression.
• The purpose of the preliminary application would be to obtain an earlier priority date. This would result in the exclusion of certain prior art from the assessment of newness and distinctiveness in respect of the main design. However, IP Australia proposes that the preliminary application would not grant any exclusive rights to the design applicant. That is, the design applicant would not gain the right to sue for infringement until the filing date of the main application.

This strategy is intended to suit industries industries in which designs are rapidly changed (eg fashion). There are, however, two obvious problems with it:

• First, and as recognised by IP Australia, it is unlikely that applicants would be able to claim priority from the Australian preliminary designs in overseas jurisdictions if the main design is ultimately pursued. This is because the Paris Convention only permits a priority claim in respect of design filings for the same design. IP Australia suggests that a mitigating factor against this problem in the proposal is that the preliminary design application would not be published in Australia until the later Australian main application is filed. This would leave open the possibility for design applications in overseas jurisdictions at least to claim priority from the Australian main application without that priority claim being invalidated by the earlier preliminary design application. However, other complications may arise. For example, public uses of the preliminary design might constitute prior art in respect of convention applications in overseas jurisdictions, noting that not every country has implemented grace periods. Furthermore, third parties may have also filed similar applications, or published relevant prior art, between the preliminary design and main design. Accordingly, the preliminary design system might pose an unacceptable risk to applicants that seek design protection in multiple jurisdictions.
• Second, this system might not provide practical benefit to the industries which are intended to be the key benefactors of the proposal. Specifically, in industries where designs are rapidly changed (eg fashion), it is frequently the case that the prior art is crowded such that a familiar person would view small increments to the preliminary design as creating a different overall impression in the later main design, thereby preventing the design applicant from claiming priority in respect of the earlier preliminary design.

Post-registration linking system

Key features of the 'post-registration linking' system would be:

• Designers could register a main design and then link this to subsequent registrations that have incremental changes.
• It is intended that this strategy would suit industries with longer product lifecycles or where the design-to-release process takes a significant period of time (eg manufacturing, automotive industries).
• Chains of subsequent designs would be permitted as long as each subsequent design was substantially similar to an earlier design in the chain (even if a particular subsequent design was not substantially similar in overall impression to the main design that was the earliest in the chain) and as long as the linked designs had the same owner as at the time of linking.
• The term of protection for any subsequent registration would commence on the date of filing for the subsequent design. However, design registrations earlier in the chain would not be considered prior art in respect of design registrations later in the chain, and any prior art that was excluded from the assessment of newness and distinctiveness in respect of the main design due to the grace period provisions would also be excluded from subsequent design registrations in the design. This could be of benefit to applicants.
• The ultimate term of protection for any subsequent registration would cease on the expiry of the main design. In this way, the post-registration linking system would have some resemblance to section 25D of the predecessor to the Designs Act. That section entitled a registered owner to make a later design application which either was an obvious adaptation of that earlier design (but in respect of another article) or a design (whether in respect of the same article or another article) that differed from the registered design only in immaterial details or in features commonly used in the relevant trade. The term of the later registration would not exceed the term of the earlier design.

Further details can be found in this fact sheet and consultation paper.

What does this mean?

This announcement reflects IP Australia's belief that the Australian design registration system could be further improved. The proposals are significant, and industry should have input on them.

If you would like to voice your opinion, IP Australia has released a survey and a link via which submissions can be uploaded by 8 August 2023 (see here). If you require any assistance with the submissions, please get in touch with our experts below.