Designs

The ALRC review (commencing in August 1992) of Australia’s industrial design laws was prompted by concerns that designs laws, which had been in place since 1906, did not strike an adequate balance between protecting design rights and encouraging innovation.

Two consultation papers, both carrying the title Designs, were released during the course of the inquiry – an Issues Paper (IP 11) in 1993 and a Discussion Paper (DP 58) in 1994.

The Designs report contains recommendations to modernise and simplify Australian designs laws. These recommendations are aimed at improving the rights of those who design the innovative visual features of manufactured products – from cut-glass to textiles to garage doors.

The report concluded that designs laws need to be tailored to encourage innovation in Australian industry. Designs laws can do this by preventing competitors from free-riding on design innovation and by providing investors in design with security for their investment.

Meeting this objective is not simply a matter of granting exclusive legal rights to all design activity. New design innovation depends to some extent on being able to use and apply previous design innovations. Design rights must not be so restrictive that they act as a barrier to further innovation in industrial design.

Key recommendations

• The system of registered design rights needs to be improved by clearer definitions, stricter eligibility and infringement tests, a more streamlined registration system, and better enforcement and dispute resolution procedures.
• The provisions in the Copyright Act 1968 (Cth) dealing with the overlap between designs and copyright should be simplified.
• The introduction of broad, unregistered anti-copying law should be considered in the context of Australia’s intellectual property laws as a whole.

Implementation

The federal government announced in February 1999 that it would substantially implement the ALRC’s report Designs, with the introduction of draft legislation to overhaul Australia’s industrial designs system. The government response deals with the Designs report recommendation by recommendation.

After consultation on a draft Bill, conducted by IP Australia, the Designs Bill 2002 was introduced into Parliament on 11 December 2002. Following consideration by the Senate Economics Legislation Committee, the Designs Act 2003 was passed and received Royal Assent on 17 December 2003. It commenced operation on 17 June 2004. For detailed information on the new Designs Act, see the IP Australia website.

The new Designs Act 2003 is substantially based on the ALRC recommendations in the Designs report. It provides clearer definitions, stricter eligibility and infringement tests, a more streamlined registration system and better enforcement and dispute resolution procedures.

The Act does not adopt ALRC recommendations in relation to the treatment of designs embodied in spare parts. The ALRC proposed measures to refer potentially anti-competitive designs to the Australian Competition and Consumer Commission (at that time called the Trade Practices Commission). These recommendations were designed to address concerns that design laws were having an anti-competitive effect on spare parts — including car parts — impacting adversely on price and affordability. The government rejected the ALRC’s recommendations in this area, instead asking officials to review the complex issue of how applications for design registration of spare parts will be treated within this system. Alternative options have been included in the new Act.

The new Act also diverges from the ALRC recommendations in relation to the designated period of design registration.

See full Government Response, released 16 February 1999 by IP Australia and Mr Warren Entsch MP, Parliamentary Secretary to the Minister for Industry, Science and Resources