Released on 16 February 1999 by IP Australia and Mr Warren Entsch MP, Parliamentary Secretary to the Minister for Industry, Science and Resources
Recommendation No 1. Australian law should continue to provide statutory protection for industrial designs.
No 2. Reform of designs law that can be achieved within the current framework of intellectual property law should be implemented through new designs legislation. Broader reform should be implemented outside that legislation.
No 3. The new design legislation should continue to focus on the visual appearance of a product.
No 4. The new designs legislation should be titled ‘Designs (Visual Features) Act’.
No 5. ACIP should take the new designs legislation recommended in this report into account in its review of the petty patents system. ACIP should address any gap in the protection of function in its recommendations for reform of the petty patent system.
No 6. The Attorney-General should commission a review of the advantages and disadvantages of introducing a broad anti-copying right into Australia’s intellectual property law. The review should consider unfair copying and unfair competition laws. It should be conducted jointly by bodies with expertise in economic policy and legal policy.
The government will decide on this recommendation after it has had an opportunity to assess the operation of the new designs legislation.
No 7. A design should be defined as one or more visual features of a product.
Accepted – the government agrees with this recommendation insofar as its intention, as outlined in the commission’s discussion paper on designs, is that ‘design’ means overall appearance and there is to be no focus on any individual element. Recommendation 8 defines ‘visual features’.
No 8. The definition of design should specify that the visual features of a product include its shape, configuration, pattern, ornamentation, colour and surface.
Accepted in part – the government considers the features of ‘colour’ and ‘surface’ do not add anything to the definition and may cause confusion and possibly lead to designs losing registration.
No 9. The reference to ‘surface’ in the definition of design should be taken to mean that the look of the surface is protectable, not the surface material or the feel of the surface.
No 10. The word ‘product’ should replace the word ‘article’ in the definition of design. ‘Product’ should mean anything that is manufactured including something hand-made.
Accepted – the government considers this may result in a marginal widening of the definition but the impact should be minimal.
No 11. There should be no reference in the definition of ‘design’ to a design being applied to or incorporated in a product.
No 12. A design of a product that consists of a number of component parts should be able to be registered as one design. A component part may itself be a product.
No 13. A design of a portion of a product will only be registrable in relation to the whole product, not in relation to the portion separately.
Accepted – the government will ensure that, although it will not be possible to obtain registration for the design of part of a product in the new designs system, a designer will have the opportunity to specify in the application any new and distinctive features and the courts will have to consider such statements in any infringement proceedings.
No 14. A design of a building or a model of a building should be capable of protection under the designs legislation provided that the building or model satisfies the definition of a product. There is no need to make separate provision for buildings in the definition of product.
No 15. The design of a product with one indefinite dimension should be able to be protected. The design of a product with more than one indefinite dimension should be able to be protected provided that at least one of the following applies to the product or part of the product with the indefinite dimension:
a cross section taken across any indefinite dimension varies according to a regular pattern
its dimensions remain in proportion
its cross-sectional shape remains the same throughout whether or not the dimensions of that shape vary according to a regular pattern or according to a ratio or series of ratios
it has a pattern or ornamentation that incorporates repeats.
No. 16. A design of packaging or get up should be capable of protection under the designs legislation. It is not necessary to include a special provision in the new designs legislation to this effect.
No 17. A design of parts of a kit, a design of the product assembled from a kit and a design of the packaging for a kit should each be capable of protection under the new designs legislation. It is not necessary to include a special provision in the legislation to this effect.
No 18. A design of the external housing of an integrated circuit should be capable of protection under the new designs legislation. It is not necessary to include a special provision in the legislation to this effect.
Accepted – the government considers the meaning of the term ‘integrated circuit’ as used in the Circuit Layouts Act 1989 excludes the external housing of an integrated circuit and the definition of ‘Article’ under the Designs Act does not exclude ‘external housings’ from registration. If the meaning of the term ‘integrated circuit’ becomes a problem the government will refine the meaning in the Circuit Layouts Act rather than providing a specific provision in the designs legislation.
No 19. The exclusion of specified literary or artistic works under Regulation 11 should not be retained. There should however be a general regulation power that would allow items such as medals to be excluded from registration as a design.
Accepted – the government agrees the existing Regulation 11 has led to misunderstandings and it is no longer appropriate and should not be retained. The government also agrees the new designs legislation should have a general regulation power to exclude items such as medals.
No 20. Screen displays should not be able to be protected as designs. It is not necessary to include any special provision in the new designs legislation to confirm this.
No 21. References to ‘judged by the eye’ should be omitted from the definition of design.
No 22. There should be no requirement for designs to be distinguished on the basis of attractiveness, sensory perceptions or aesthetic sensation.
No 23. There should be no requirement of consumer or eye appeal in the definition of design.
No 24. New and distinctive visual features of a product should be able to be protected regardless of whether those features serve or serve only a functional purpose. S 18(1) should be retained.
No 25. The new designs legislation should not provide that designs ‘dictated by function’ should be expressly excluded from protection, either in the definition of design or otherwise.
No 26. There should be no reference to ‘methods or principles of construction’ in the definition of design.
No 27. A design of the internal shape of a product should be capable of protection under the designs legislation. It is not necessary to include a special provision in the legislation to the effect.
No 28. Designs should not be differentiated on the ground of the level of care, skill or labour expended in creating them.
No 29. Originality should not be retained as a prerequisite for design protection.
No 30. The current novelty test for design protection should be replaced with a test with stricter eligibility requirements.
Accepted – the government considers that it is in Australia’s economic interest to tighten the eligibility requirements for design registration. The government acknowledges that a criticism of the existing designs system is that, due to the low threshold test and an inappropriate test for infringement, in a majority of infringement proceedings, a design is held to be valid although not infringed.
In addition, the government recognises, even though Australian residents register approximately twice as many designs as non-residents, it is clearly not in Australia’s economic interest to grant an exclusive right for a design that may not qualify for registration in another country.
No 31. The tests of immaterial detail trade variants and obvious adaptations should not be retained.
No 32. There should continue to be a requirement for registrable designs to be new but this should only be a filter for identical designs. A two-step test of novelty and distinctiveness should be adopted to assess the eligibility of a design for registration.
Accepted – the design system needs a test of greater differentiation in order to significantly raise the eligibility threshold for registration. See also comments to recommendation 30.
No 33. Distinctiveness should be assessed by considering the overall impression of the design.
Accepted – the courts should not consider minor or insignificant changes to a design relevant if the overall impression remains one of substantial or significant similarity. That is, the Courts should not consider the notion of ‘individual specific appearance’ and they should assess appearance from the perspective of the whole appearance of the competing designs. See also comments in relation to recommendation 37.
No 34. Distinctiveness should be assessed by the standard of an informed user.
Accepted – the courts should assess designs from the position of a person likely to be familiar with the prior art. An ‘informed user’ is a person familiar with the design product, for example consumers, experts, specialists and skilled artisans, but is not a design expert.
No 35. The infringement and distinctiveness tests should be the same.
Accepted – in considering this recommendation the government accepts a criticism of the existing designs system is that due to an inappropriate test for infringement, in a majority of infringement proceedings, a design is held to be valid although not infringed. The government believes that a consistent threshold and infringement test will go some way to remedy this.
No 36. Distinctiveness should be assessed by a test of ‘substantially similar in overall impression’.
No 37. The new designs legislation should give guidance to the courts in assessing distinctiveness. It should be specified that:
common elements are to be given more weight than differences; and
the freedom of the designer is to be taken into account.
Accepted – the government agrees the courts have tended to concentrate on the differences between designs when assessing newness or originality. The government also agrees appropriate legislative change will encourage the courts to give more weight to the common elements between competing designs, and take into account the limits imposed by product and marketing constraints on the designer.
No 38. Minority recommendation. The test of distinctiveness should require the design to be distinctive for the purposes of the relevant product market.
Not Accepted – the government considers the term ‘product market’ creates inconsistencies with the definition of ‘design’ and the recommendation seeks to introduce a complex and uncertain dimension quite foreign to designs legislation. A majority of the Commission did not support the recommendation, believing it to be neither useful nor necessary.
No 39. A design should be taken to have been ‘used’ for the purposes of determining the prior art base only if it has been used in trade or commerce.
Not accepted – the government considers the court’s existing interpretation of use should remain (that is, ‘prior use’ is a disclosure of an article embodying the design to the public, or individual members of the public, unless the person to whom the design has been disclosed is under an obligation to maintain confidentiality). The commission’s proposed test is unclear as it is uncertain what it intends “trade or commerce” to mean. The Law Council of Australia suggested adoption of the test would represent a lowering of the threshold for registrability rather than a heightening of it.
No 40. In relation to the prior art base:
a design should be taken to be new unless at any time before the priority date for the application for registration of the design
– an identical design has been used in Australia or
– an identical design has been published anywhere in the world
a design should be taken to be distinctive unless on the priority date for the application for registration of the design
– a substantially similar design was being used in Australia or
– a substantially similar design was currently registered anywhere in the world or;
– a substantially similar design had been published in Australia within the previous 15 years under the optional publication and registration system.
Accepted in part – the government rejects the proposal that a design will be registrable if it is based on or similar to a design older than 15 years. The government considers the proposal would be too complex to administer and, as a design would be eligible for registration if it is based on or similar to a design older than 15 years, applicants may be able to register a design continuously.
No 41. Lapsed applications should not form part of the research material for the prior art base.
Accepted – the government agrees that a lapsed application should not prejudice the novelty and distinctiveness of latter applications. However, if a design that is the subject of a lapsed application is used in Australia, or published anywhere in the world, future applications for registration of that design will be prevented due to prior publication.
No 42. The provisions regarding disclosure of a design without consent should stipulate the period within which an application for registration must be made.
No 43. The definition of an official exhibition and of an international exhibition should be brought into line with those contained in the Patents Act.
No 44. No provision for a grace period should be made in the new designs legislation.
Accepted – the government agrees with this recommendation and considers a grace period is likely to inadvertently rob many Australians of the ability to obtain corresponding foreign design registration due to the uncertainty of reciprocal international arrangements.
No 45. Infringement should be assessed by a test of ‘Substantially similar in overall impression’.
Accepted – the government agrees with this recommendation and considers the difficulties involved in adapting a new infringement test are outweighed by the benefits gained by reforming the current situation where designs must be virtually identical for the courts to find infringement has occurred.
No 46. In determining infringement the court should assess competing designs from the position of an informed user.
Accepted – the government agrees with this recommendation and considers an ‘informed user’ is a person familiar with the design product, for example consumers, experts, specialists and skilled artisans, but is not a design expert.
No 47. Statements of monopoly and novelty should not be required in the registration process under the Designs Act. Instead, applicants should be required to identify the new or distinctive features of a design on the application form for registration.
Accepted in part – the government agrees that applications will not require statements of monopoly and novelty. However, the government disagrees with the second part of the recommendation that applicants must identify the new or distinctive features of a design on the application form for registration. The government proposes that applicants should have the option to identify in their application the new and distinctive features they believe distinguish their design from existing designs.
No 48. In infringement proceedings the court should be directed to consider whether the allegedly infringing design is substantially similar in overall impression to the registered design, having regard to the whole of the product in relation to which the design is registered.
Accepted – the government considers the courts should assess infringement by regarding the overall impression given by the whole of the product in relation to which the design is registered. If the application claims any particular features as new and distinctive, the courts should pay particular attention to those features, but only in the context of the whole of the product.
No 49. In assessing infringement the court should pay particular attention to any visual features of the product that are claimed to be new and distinctive in the application for registration of the design.
No 50. Where a visual feature that is claimed to be new and distinctive relates to only part of the product, the court should pay particular attention to that part of the product but only in the context of the whole of the product.
No 51. When an applicant does not isolate and identify any particular new or distinctive features of a design, the court should consider the overall appearance of the whole product in determining whether the design has been infringed.
No 52. In determining whether a design was infringed the court should, as a matter of principle, give more weight to the similarities between competing designs than to their differences.
Accepted – in considering this recommendation the government recognised the strong concerns of design owners that registration is currently inadequate because they believe the court place undue emphasis on minor differences between competing designs instead of considering the similarities. As such, the government considers this recommendation is a useful suggestion for how the courts should assess infringement.
No 53. It should be an infringement of the design of a product to sell a complete or substantially complete kit which is intended to be assembled to make the product.
No 54. A non exclusive list of factors to be considered in determining infringement should be specified in the new designs legislation.
No 55. In determining infringement the court should consider:
the nature and use or uses of the product, or the relevant part or portion of the product, as these affect the designer’s freedom to innovate
the relevant prior art
any features of the design identified on the application form for registration as being new and distinctive
When only a part or portion of the registered design is substantially similar to the alleged infringing design, the amount, the quality and importance of that part or portion in relation to the whole of the registered design.
Accepted – the government agrees with this recommendation and considers whether or not function dictates certain features of a design should be an irrelevant issue when determining infringement, since functionality is not a bar to registration
No 56. Market confusion should not be specified as a factor to be considered in determining infringement. However, the new designs legislation should not expressly exclude it as a factor that may be taken into account.
No 57. Fraudulent imitation should be removed as a ground of infringement.
No 58. An alleged infringer’s level of awareness should not be relevant in determining whether a later design is substantially similar in overall impression to a registered design. The level of awareness should be considered by the court in awarding damages and in exercising its discretion to grant an injunction.
No 59. The secondary grounds of infringement, selling, hiring and importing, should remain.
No 60. There should be no exemption from infringement proceedings for non-commercial use of designs.
No 61. There should be no provision in the new designs legislation that the owner has the exclusive right to exploit the design, as defined in the Patents Act.
No 62. Moral rights should not be included in the rights granted to design owners under the new designs legislation.
No 63. The Attorney-General should commission a review of s 51(3) of the Trade Practices Act 1974 to assess whether the policy reflected by the exemption in that provision is appropriate and, if so, whether it is expressed with sufficient precision and consistency regarding the range of intellectual property rights affected or potentially affected.
Accepted – review of subsections 52(2) and (3) of the Trade Practices Act 1974 has been initiated, and is being conducted by the National Competition Council.
No 64. The legislation should provide that it is the person who creates the design – the designer – who is the owner of the design and who may apply for registration. The current requirement that the creator must be a natural person should be retained.
Accepted – the government agrees with this recommendation and considers with advanced computer based records management techniques it should always be possible to identify the human author.
No 65. It is not necessary to include in the new designs legislation any specific guidelines on the ownership of a computer-generated design.
No 66. A person who commissions or employs a designer to make a design should continue to be regarded as the owner of the design. Similarly where a design has been assigned, the assignee should be the owner of the design and entitled to apply for registration. The new designs legislation should make it clear that these principles may be excluded or modified by agreement.
No 67. The new designs legislation should continue to allow but not require joint applications to be made.
No 68. There should be no change to the existing law that the owner of the registered design is the person who is registered as owner.
No 69. The new designs legislation should provide that the Registrar is not required to record an assignment or an interest in a jointly owned design without the consent of all the joint owners.
No 70. The new designs legislation should provide that an infringement action can only be brought by the currently registered owner of the design, not a former registered owner.
No 71. The designs register should continue to record security interests in designs. This should be reviewed if a central personal property securities register is established.
No 72. A decision of the Registrar to record or not to record an interest should be able to be reviewed under administrative review procedures but not as part of opposition proceedings.
No 73. On receiving an application to amend the register the Registrar should be required to make changes to the register unless he or she is of the opinion that the changes should not be made. The references to ‘proof’ that now appear in s 38, 38AA and 38A should be omitted.
Accepted – the government agrees with this recommendation and notes the Registrar’s responsibility to account for assignments on the register extends only as far as being satisfied that the documents provided as evidence for a change of ownership are in order.
No 74. The Act should expressly allow the register to be amended after a registered design has expired or lapsed to record changes in the ownership of, and interests in, the design that took place during the design’s period of registration.
No 75. The Crown use provisions in Designs Act Part VIA should not be retained in the new designs legislation
Not Accepted – the government disagrees with this recommendation as it considers it is important that it maintains a discretion to use a design, subject to payment of compensation, for reasons including possible defence and security needs. Many Commonwealth and State agencies support retaining the crown use provisions and they are consistent with other intellectual property legislation. The government also considers the reason the Crown use provisions have never been used is insufficient justification for their removal, indeed their existence may have acted as a lever in negotiations for ensuring cooperation from design owners.
No 76. The design right in the new designs legislation should continue to be based on registration.
No 77. An optional publication or registration system should be introduced into the new designs legislation. At any time within six months from the priority date a person who has filed an application for registration can request publication or can seek formal examination and registration of the design. Choosing publication should not entitle a person to an exclusive property right but it should have the effect of preventing other applicants from obtaining priority. If no election were made within the six-month period the application should be regarded as lapsed.
Accepted – in considering this recommendation the government considered the possibility of having an unregistered design right available to designers, but concluded the concept of such a right is incompatible with a registered designs system.
No 78. The legislation should make it clear that an application for registration or any other document is filed when it is delivered to AIPO or one of its State offices either personally or by post or by any other prescribed means, such as delivery by facsimile and electronic lodgement. Where the Registrar is satisfied the application reaches certain minimum requirements the Registrar is to give the application a filing date.
No 79. The application for design registration should comply with the following.
It should be in a form approved by the Registrar of Designs. The regulations should list specified matters that must be contained on registration application forms.
It should contain the following:
– information that identifies the applicant, the designer and sets out the reason the applicant is entitled to make the application
– information that identifies the product bearing the design
– prescribed number of representations, suitable for reproduction, of the design
– a description of the design identifying any particular features that the applicant considers to be new and distinctive
– an indication of the intended use or uses of the product to which the design is applied or in which it is incorporated.
It should contain a statement to the effect that the applicant has no reason to believe the design is not new or distinctive. For priority claims, such as Convention applications, multiple applications and divisionals, it should contain such, additional information as is required.
Accepted in part – regarding the fourth dash point in the second dot point, the government proposes that applicants should have the option to identify in their application the new and distinctive features they believe distinguishes their design from existing designs. The government considers the intent of the commission in relation to the fifth dash point of the second dot point is relevant to classification purposes only and proposes to make this clear when drafting the new legislation.
The requirement detailed in the third dot point does not offer any clear benefit to either the users or administrators of the designs system.
No 80. AIPO should provide (sic) make pamphlets readily available that give advice on
how to register, including examples of statements of distinctiveness and representations
multiple applications, divisional applications and Convention applications
the different forms of intellectual property and on the rights they confer, including the rights arising from the registration of a design
the registration/publication options
how to challenge the validity of a registered design
what to do if a design may have been infringed, including proceedings for unjustified threats, infringement opinions and mediation options.
No 81. Where the Registrar receives a request to register a design, then before the design can be registered AIPO should examine the application for registration to ensure that the formalities have been complied with. In particular AIPO should examine the application to ensure that
the documents are in the required form and contain the required number of representations
the documents are sufficient to identify the design and the product or part of a product embodying the design and the priority date
the information contained in the application is sufficient to establish that the applicant is entitled to make the application.
No 82. Procedures relating to the decision to register should be as follows.
Where the Registrar is satisfied as to the formalities the Registrar must register the design.
An applicant for registration should, when notified by the AIPO, be allowed three months in which to correct any formal deficiencies in the registration application. Failure to correct within the required time will mean the application will lapse. Extensions can be granted in certain circumstances.
The Registrar may refuse to register designs that are clearly not registrable. There should be the right to seek AAT review of decisions to refuse to register.
Accepted in part – the government considers a two-month period is sufficient to allow applicants to correct any formal deficiencies in their applications for registration.
No 83. The ability of applicants to amend applications as set out in the Designs Act s 22B should be retained in the new designs legislation.
No 84. The ability to preserve priority by making a subsequent application should not be retained.
Accepted – the government agrees with this recommendation despite all major interest groups supporting the retention of section 25D type applications. The reason for the government’s position are:
Within 6 months from the priority date (during which the applicant must decide what to do with the design application), if there is further product development, the applicant has the option of either lodging an application for a new design or possibly lodging an amendment (depending on the nature and extent of that amendment) to account for product improvements;
very few countries permit section 25D type applications and there are no international treaties or agreements which oblige Australia to provide such a system; and
It is not in Australia’s economic interest to continue to provide what is currently a broad design right.
No 85. The new designs legislation should retain provision for preserving the priority of designs that have been divided out from the initial application for registration. Priority may only be preserved where the design described in the later ‘divisional’ application does not increase the scope of the initial application. The new designs legislation should make it clear that the priority date can be preserved whether or not the initial application ever proceeds to registration or whether or not a request for registration is made in relation to the initial application.
No 86. The requirements regarding Convention applications should not be amended – to gain Convention priority the person making the application under Australian law must be the applicant in the Convention country or the assignee or legal representative of the applicant in the Convention country or the legal representative of the applicant’s assignee.
No 87. Provision should not be made for the deferment of acceptance of an application for registration.
No 88. Provision should be made for withdrawn applications to be disregarded in certain circumstances.
No 89. Provision should be made to allow two or more designs to be registered in a single application (a ‘multiple application’). Each additional design included in a multiple application should be charged a reduced fee.
Accepted – the government agrees with this recommendation and notes it will make clear for multiple applications that it will be in the applicant’s interest to provide, for each design disclosed in the application, details which identify features that distinguish the designs from existing designs. This will not be a mandatory requirement.
No 90. There should be no limit to the total number of designs to be included in a multiple application.
No 91. A multiple application for registration may be made for the design of one or more than one product provided that all of the products belong to the same sub-class of the classification of designs provided for in the Annex of the Agreement Establishing an International Classification for Industrial Designs, signed at Locarno on 8 October 1968.
Accepted in part – the government agrees with this recommendation except that it will allow multiple applications for designs belonging to the same class rather than the same sub-class.
No 92. A multiple application may be made for the design of more than one product provided that the design is a common design for each product identified in the application.
No 93. No separate rules should be made for kits. However the individual components of kits should be registrable in a multiple application, provided
all products in the kit fall within the same sub-class of the Locarno Classification, or
there is a common design for each product identified in kit.
Accepted in part – the government agrees with this recommendation except the articles in the kits must fall within the same class rather than the same sub-class. The government notes that applicants will have the option to seek registration as a single design for a kit which forms part of a single article or a set of articles. However, applicants will not be able to include additional articles to the kit.
No 94. Where the registration of a multiple application is refused, an applicant should be given three months to file an application to preserve priority for any design that may not be included in the original application but for which registration is sought. The Registrar should have a discretion, reviewable on the merits, to refuse an application for the registration of a design for more than one product.
Accepted – the government considers it would not be in the public interest to delay registration (and therefore publication of a design’s details) by any more than 9 months.
No 95. The description of the design contained in an application should not be published at the time of the filing of the application. The legislation should require that at the time the application is filed there should be publication of the fact that an application has been filed and of the bibliographical details. There should be public notification of the fact that an application for registration has lapsed. Design details should only be published once the registration is granted.
Accepted in part – the government proposes that the Registrar will not publish details of a design application until it is registered or the applicant requests it.
Publication of design application details could encourage applicants to file incorrect or misleading information since publication could adversely affect the applicant (for example, a competitor could develop a very similar design based on that information and be using it even before the applicant has secured registration). Also, if the application lapses, publication at filing would have the undesired consequence of ensuring the design disclosed by the application becomes part of the prior art.
No 96. There should be no provision for publication of designs to be deferred. Design details should be made available for public inspection once registration has been granted.
No 97. The new designs legislation should continue to provide for the register to be
kept at the AIPO
kept in whole or in part by using a computer
available for inspection during business hours or alternatively accessible through a computer terminal so that the register can be read on the screen or a print out obtained.
No 98. The new designs legislation should not continue to provide that certificates of registration are prima facie evidence of the validity of registration. Instead the legislation should provide that
the register is evidence of any particular or other matter entered on it
a copy of, or an extract from, the register that is certified by the Registrar to be a true record or extract is admissible in any proceedings as if it were the original
a document certified by the Registrar as reproducing in writing or a computer record of all or any of the particulars comprised in the register, is admissible in any proceedings as evidence of those particulars.
Accepted – the government agrees with this recommendation and notes that it would be misleading and inappropriate for a certificate of registration to claim to be prima facie evidence of the validity of the registration because there will be no substantive examination prior to registration.
No 99. The Registrar should continue to have the power to correct clerical errors and obvious mistakes on the register, either on application by a design owner or on his or her own initiative.
No 100. The Registrar should have a wider power to correct the register only in specified limited circumstances. The Registrar may not exercise this power unless there has first been the opportunity for a hearing and for appeal to the AAT.
No 101. The new designs legislation should include the offences set out in Designs Act s 45 (1) but should also extend those offences to include
false representations that a design is registered made by any person about the design of any product, and
false representations made by any person about the ownership of a registered design.
No 102. The existing offences contained in the Designs Act s 36 should be retained in the new designs legislation with some amendments. It is not necessary to retain the offence of making a writing that falsely purports to be a copy of an entry in the register. The mental elements should be brought into line with those for similar Commonwealth offences.
Accepted – the government agrees with this recommendation and proposes to make the provision consistent with the corresponding provisions in the Patents Act 1990 and Trade Marks Acts 1995.
No 103. It is not necessary to introduce into the new designs legislation a more general offence of making a false statement or of filing an application for a design the applicant knew was not new and distinctive.
Accepted – the government agrees with this recommendation and notes other Commonwealth legislation, such as the Crimes Act 1914 and the Statutory Declarations Act 1959, deals with offences of that kind.
No 104. There should be no initial short-term period of registration for designs.
No 105. The maximum duration of protection for registered designs should be 15 years. The existing maximum 16-year period of protection should remain unchanged except for the removal of the initial one-year period.
Not Accepted – the government disagrees with this recommendation and proposes the maximum duration of registration should be 10 years. It is not in the public interest to go beyond Australia’s international obligations which currently impose a 10-year duration.
No 106. Design registration should be available for three discrete periods of five years. Entitlement to protection after the initial period should be based on applications for renewal. Renewal should be automatic if the design owner complies with formalities and, subject to the six-month grace period, pays the fees.
Accepted in part – the government agrees with this recommendation, although, in line with its response to recommendation 105, there will be 2 rather than 3 discrete periods of 5 years.
No 107. Design owners should continue to be responsible for ensuring that applications to renew their designs are made within the specified time. Whether AIPO sends reminder notices to owners before a design expires should be a matter for AIPO.
Accepted – the government agrees with this recommendation and considers it would be too expensive for IP Australia to provide renewal notices. The government notes that IP Australia does not provide renewal notices to owners of patents or trade marks and design owners will continue to have a grace period as well as the opportunity to request an extension of time. Also, it is not in the public interest to remind owners to renew their exclusive rights.
No 108. The existing grounds for granting an extension should be retained in the new designs legislation but should not be expanded.
No 109. The Registrar should advise the registered owner where a design is restored to the register after an extension is granted.
No 110. The existing right of appeal to the AAT for review of refusals to grant an extension should be retained.
Accepted – this is consistent with the existing designs legislation, and with patents and trade marks legislation.
No 111. No remedy should lie for infringement that occurred while the design was not registered.
No 112. If a lapsed registration is restored a person who took action or definite steps to exploit the design commercially during the period in which the design had lapsed shall have the right to continue to do the infringing act but the right does not extend to granting a licence to another person to do the act.
Accepted – the government agrees with this recommendation, however, it considers that a person who exploited the design during the unprotected period should also have the right to sell this privilege (as opposed to propagating multiple licences) to another person as part of the sale of the first mentioned person’s business. However, the purchaser of this privilege would not be able to sell it again.
No 113. If a lapsed registration is restored a person who took action or definite steps to exploit the design commercially during the period in which the design had lapsed should not be entitled to compensation from the owner for any loss suffered as a result of the registration being restored.
No 114. Third parties should not have the power to oppose the grant of an extension of time to renew a design’s registration.
Not Accepted – the government disagrees with this recommendation as denying a third party the right to oppose the grant of an extension of time would also remove an inexpensive opportunity to resolve the situation as is presently available under the current designs legislation and the corresponding patents legislation. Representative groups, such as the Australian Manufacturers’ Patents, Industrial Designs and Trade Marks Association (AMPICTA) and the Institute of Patent Attorneys of Australia support this position. However, opposition will not be available in situations where the Registrar grants extension of time because of an error or omission by IP Australia.
No 115. The legislation should require the Registrar to advertise in the Official Journal the fact that
an application for an extension exceeding three months has been lodged
as a result of an error or omission by AIPO an extension of more than three months will be granted
a design’s registration has been restored.
Accepted – the government agrees with this recommendation and notes the Registrar will advertise all extensions of time whatever the length of time. The government also notes that this is the procedure under the patents legislation. This is in line with the government’s policy to keep procedures open to public scrutiny, and the government accountable for its actions.
No 116. Specific provision should be made in the new designs legislation for the surrender of a design registration.
No 117. Opposition proceedings should not be available before registration of the design.
Accepted – the government agrees with this recommendation and notes that as the details of a design application will not be available prior to registration, there will not be any grounds to oppose it until after registration.
No 118. It should be possible to challenge the validity of a registered design at any time after the grant of registration by initiating examination proceedings.
Accepted – the government agrees with this recommendation, however, substantive examination will be mandatory prior to commencement of any opposition proceedings.
No 119. A request for examination may ask the Registrar to examine
whether the application for registration
– met the minimum requirements for an application
– claimed protection for the visual appearance of a product
– was for a design of a product that was registrable
– was for a design that was not new or not distinctive
– had been amended contrary to the Act
whether or not
– the applicant was entitled to make the application for registration or the application to change the name of the owner on the register
– the design should be referred to the TPC in accordance with the component parts referral procedure.
Accepted – the government agrees in principle with this recommendation.
However, a party will only have to lodge a request for examination. The examination conducted by the Registrar will encompass the items contained in the recommendation except for the last dot point. This is because design applications for component parts will not be referred to the Australian Competition and Consumer Commission.
No 120. The mechanism for challenging the validity of a registered design before the Registrar is to be as follows.
A registered design owner or any other person may request the Registrar to examine the validity of a registered design at any time.
On receipt of a request, the Registrar must conduct an examination, come to a decision about validity of the design and advise the affected parties of the decision and the reasons for the decision and of the fact that they have a given period in which they may request a hearing.
The parties are then given the opportunity to reply in writing and if requested by a party a hearing is to take place before the Registrar.
The Registrar is to advise affected parties of the decision from the hearing and of the reasons for the decision. The parties are to be advised that they may appeal against the decision.
If there is no subsequent appeal the register is to be amended.
Where legal proceedings are commenced the hearing is to be discontinued.
Accepted – the government agrees in principle with this recommendation and emphasises that a substantive examination must be conducted prior to any opposition proceedings, including before a court.
No 121. If a challenge is upheld and no appeal is lodged within the prescribed period the register should be amended accordingly. A registered design that is found not to have been validly registered should be taken to be removed. A design that is taken to have been removed should be regarded as never having been registered, but intervening court decisions and contracts should not be affected.
No 122. The Registrar should be empowered to amend the register to remove a design on the Registrar’s own motion provided that there has first been the appropriate opportunity for a hearing and appeal and no application has been made for a hearing or appeal.
No 123. The AAT should be designated the primary body of review of decisions of the Registrar of Designs, with retention of the right of appeal to the Federal Court on questions of law.
The Government is yet to determine this issue. A decision will be made when the Government responds to the ARC’s report on its examination of the review of decisions of the Commissioner of Patents.
No 124. The appointment of AAT members should reflect the increase in AAT jurisdiction over industrial property issues.
See recommendation 123
No 125. A separate industrial property jurisdiction should not be established within the AAT at present.
Accepted – the total number of applications dealing with industrial property matters does not justify creation and consequent administrative costs of a separate jurisdiction.
No 126. The existing provision for AAT review under the Designs Act of certain decisions of the Registrar should be retained in the new designs legislation.
Accepted – this reflects government policy and established administrative review processes.
No 127. The Registrar’s decision to grant an extension or refusal to grant an extension should continue to be subject to review by the AAT.
Accepted – this reflects government policy and established administrative review processes.
No 128. In accordance with the agreed principles of non-reviewability, the following decisions should continue to be non-reviewable by the AAT under the new designs legislation
refusal to accord a priority date to applications (s 21)
refusal to accord a basic application the status of a Convention Application (s 49(1))
refusal to cancel registration upon voluntary surrender by the design owner
refusal to register interest of mortgagee or licensee upon proof of title (to the extent the decision does not form part of opposition proceedings) (s 38A)
decision to amend the Register where the applicant has died or body corporate ceased to exist (s 22A).
Accepted – decisions not reviewable by the AAT may be reviewed by an application under the Administrative Decisions (Judicial Review) Act 1977.
No 129. The new designs legislation should provide that where the Act requires that the Registrar ‘must’ complete an action then the Registrar must comply as soon as practicable.
No 130. As a general principle administrative decisions of the Registrar of Designs should be subject to external merits review.
Accepted in principle but the response to recommendation 123 also applies.
No 131. The Registrar’s decision to refuse to register a design and the Registrar’s refusal to amend an application should be reviewable by the AAT.
See recommendation 123
No 132. The Registrar’s refusal to allow a multiple application and to require instead a divisional application in relation to a set should be subject to review by the AAT.
See recommendation 123
No 133. The decision whether a design should be removed from the register and related decisions should be subject to further review by the AAT after opposition proceedings.
See recommendation 123
No 134. Decisions currently made by application to a prescribed court should be made by the Registrar in opposition proceedings with provision for review by the AAT.
Accepted in principle for review by the Federal Court. However, the outcome of the reviews mentioned in the response to recommendation 123 will have a bearing on the appropriate review body.
No 135. AIPO should ensure that basic information on design protection and registration is freely available and accessible to assist potential applicants for design registration and registered design owners.
No 136. A new court with limited jurisdiction to hear industrial property disputes, including designs disputes, should not be established.
Accepted – the government agrees with this recommendation as there is insufficient demand in Australia for it to establish a specialist Industrial Property Court and such a court would not necessarily resolve the existing problems of costs and delays.
No 137. The current jurisdiction of the Federal Court and State and Territory Supreme Courts with respect to matters arising under the Designs Act should be retained in the new designs legislation.
Accepted – the government agrees in principle with this recommendation and it will include a provision similar to section 39 of the Designs Act in the new designs legislation to cover all grounds of invalidity, including the one now specified in paragraph 28(a) of the Designs Act.
No 138. The Federal Court of Australia should continue to be the court of appeal in designs matters but there should also be appeal from the Federal Court to the High Court with special leave.
No 139. A tribunal made up of a panel of AIPO officers to hear disputes involving designs is not appropriate and should not be established.
No 140. At the request of the parties the Registrar of Designs should provide an opinion on any issue related to the validity of designs. The courts should increase their use, where appropriate, of existing powers to request a preliminary technical opinion from the Registrar of Designs on any question of fact.
The government considers this recommendation is a matter for the courts to determine but notes that a substantive examination, which the Registrar must conduct prior to opposition proceedings, would constitute an expert opinion.
No 141. The courts should increase the use, where appropriate, of informative neutral expert advice in the course of pre-trial proceedings in designs matters.
The government considers this is a matter for the courts and will refer it to the courts for their consideration.
No 142. The new designs legislation should not specify particular procedural rules for design matters. Instead courts should apply their rules of procedure flexibly to designs matters and give consideration to adapting their procedures to the specific needs of design disputes where appropriate.
Accepted – procedural rules are a matter for the courts and tribunals.
No 143. The courts should increase their use, where appropriate, of active pre-trial judicial case management in designs matters.
The government considers this recommendation is a matter for the courts to determine.
No 144. Courts exercising designs jurisdiction should continue to develop and increase the use, where appropriate, of legislative court-annexed arbitration and mediation schemes.
The government considers this recommendation is a matter for the courts to determine.
No 145. No special rules should govern the application of the laws of evidence in designs disputes.
The government considers this recommendation is a matter for the courts to determine.
No 146. AIPO should coordinate a service to provide design applicants and owners with information on the availability and suitability of ADR to design disputes.
Not accepted – however, the government notes that IP Australia will provide general information that explains that alternative dispute resolution is available but it does not consider IP Australia is the appropriate agency to coordinate such a service.
No 147. Lawyers and patent attorneys should advise clients of the availability and suitability of ADR to resolve design disputes wherever it becomes apparent that a dispute has arisen or is likely to do so.
The government urges the legal and patent attorney professions to give serious consideration to the recommendation.
No 148. AIPO, the courts, lawyers and patent attorneys should recognise in their procedures and advice that
alternative dispute resolution including in particular, negotiation, mediation and early neutral evaluation, should be considered as a first option in the resolution of all design disputes that do not absolutely require a court adjudication on the validity of a design right
arbitration of designs disputes involving international elements should be considered as an option before commencing litigation
court-annexed arbitration and mediation schemes should be considered as an option wherever a design dispute has already entered the courts.
The government notes this recommendation but considers it is up to the other bodies concerned to implement it.
No 149. The court should continue to have a power to grant an injunction in all cases of infringement. No special rules should apply to govern the availability of injunctions in designs litigation.
No 150. The court should continue to have a power to award damages in all cases of infringement.
No 151. Provision should be made for additional damages in cases of flagrant infringement in terms similar to the Copyright Act s 115(4).
No 152. It should continue to be possible for the plaintiff in design infringement cases to obtain an account of profits as an alternative to damages.
No 153. The discretion to grant remedies set out in Designs Act s 32B should be retained in the new designs legislation and expanded so that the court may reduce damages as well as refuse to award them.
No 154. In cases of primary infringement, to attract the court’s discretion to reduce or refuse to award damages a defendant must prove not only that he or she did not know that a design was registered but that he or she had taken all reasonable steps to find out whether the design was registered. In this respect Designs Act s 32 B should be retained in its current form in the new designs legislation.
Accepted – the government agrees with this recommendation in principle but the Parliamentary Counsel is the best body to frame the legislative language and to decide on the appropriate manner in which to implement the policy objective.
No 155. In cases of secondary infringement, to attract the court’s discretion to reduce or refuse to award damages a defendant must prove that he or she was not aware and had no reason to be aware, that the design was registered. There should be no requirement that the defendant must take all reasonable steps to ascertain whether exclusive rights in the design existed.
Accepted – the government agrees with this recommendation in principle but the Parliamentary Counsel is the best body to frame the legislative language and to decide on the appropriate manner in which to implement the policy objective.
No 156. Conversion damages for infringement proceedings should not be introduced into the new designs legislation.
No 157. Delivery up should continue to be available as a remedy for design infringement when appropriate and when it is within the court’s jurisdiction. There is no need for specific provision for this to be made in the new designs legislation.
No 158. Anton Piller orders should continue to be available for designs infringement. There is no need for specific provision to be made for this in the new designs legislation.
Accepted – the government agrees with this recommendation but notes the Registrar must conduct a substantive examination before a court may grant an order.
No 159. The new designs legislation should continue to provide remedies for unjustified threats of infringement proceedings. In this respect s 32C and s 32D of the Designs Act should be retained in their current form.
Accepted – the government agrees with this recommendation but notes the Registrar must conduct a substantive examination before a court may award a remedy.
No 160. No offence of infringement should be provided in the new designs legislation.
No 161. The Act should provide that in a proceeding for infringement of a registered design the fact that the product, the label or the packaging is marked is to be prima facie evidence that the defendant was aware that the design was registered. Marking should not be a pre-condition for obtaining remedies for infringement.
No 162. No provision should be made in the designs legislation for the compulsory licensing of designs.
Not accepted – the government disagrees with this recommendation as it considers compulsory licensing maintains the checks and balances in the system. The government also believes the fact that Australians have never used the compulsory licensing provisions is insufficient reason to remove them. Further, the provisions could also address concerns expressed by agencies such as Treasury and the (then) Industry Commission over the potential for anti-competitive effects flowing from design protection, as acknowledged by the Commission.
No 163. The new designs legislation should continue to prohibit pirate imports but permit parallel imports.
Accepted – the government agrees with this recommendation because no major problems have occurred under the existing system.
No 164. The new designs legislation should not include a power of seizure by Customs of imported goods bearing infringing designs.
Accepted – the government agrees with this recommendation as a seizure system would be costly to administer and of limited value.
No 165. The new designs legislation should include a procedure for referral of potentially anti-competitive designs to the TPC.
Not Accepted – officials will review the complex issue of how applications for design registration of spare parts will be treated within this system.
No 166. A design should be referred to the TPC where
the design is a design of a component part
the component part is to be used to repair a product that is
– likely to require repair during its expected life and
– assembled from many component parts
the component part is manufactured by or under licence from the product manufacturer or importer.
Not Accepted – see recommendation 165.
No 167. To determine whether a design is anti-competitive the TPC should determine whether, in its opinion, the grant of the design right in favour of the applicant
would constitute a contravention of s 50 of the Trade Practices Act if the grant of that design right were the acquisition by the applicant of an asset of a person and
would not have been authorised under s 88 of that Act if the applicant had applied for an authorisation.
Not Accepted – see recommendation 165.
No 168. Where the TPC determines that the grant of a design right would be anti-competitive that design should not be registrable unless
the TPC and the Registrar of Designs agree upon conditions to apply to the exercise of the design right
in the TPC’s opinion the grant of the design right would have been authorised under s 88 of the Trade Practices Act if those conditions were met and
the applicant gives the Registrar of Designs a written undertaking to comply with those conditions.
Not Accepted – see recommendation 165.
The referral procedure should be initiated only upon request from the applicant or where registration of the design is opposed.
The Registrar should be entitled to require the applicant to provide relevant information in the form of a statutory declaration.
The Registrar should be entitled to rely without further enquiry on the applicant’s statements as to whether the component part is manufactured by or under licence
from the product manufacturer or importer.
The Registrar should maintain a public register of undertakings given by applicants under the referral procedure.
A provision similar to s 87B of the Trade Practices Act 1974 should be included in the designs legislation, making such undertakings enforceable against the applicant and any assignee or successor-in-title to the design right.
The Registrar should have the power, exercisable only with the TPC’s agreement,
– to refer more than one design for consideration in a single TPC report,
– to ask the TPC to advise in a single report on a category of designs of which the particular design in question is one instance.
The TPC should be required to give its opinion within 30 days of being requested for its report, excluding any period during which the TPC is waiting for the applicant to provide additional requested information.
The Registrar’s decision to refer or not to refer a design to the TPC should be reviewable by the AAT.
The TPC’s opinion should be reviewable by the Trade Practices Tribunal.
The referral procedure should only apply to designs set out in design applications made after the new legislation comes into effect.
Not Accepted – see recommendation 165.
No 170. The Copyright Act s 74-77 and s 21(3) should be repealed and an adaptation right should be introduced for artistic works. It should be expressly provided that it is not a reproduction of a work in a two-dimensional form to make a version of the work in a three-dimensional form.
Not Accepted – the commission did not clearly specify how an adaptation right would operate and the suggestion poses difficulties such as:
because of the inherently fluid meaning of the expressions ‘sculpture’ and ‘work of artistic craftsmanship’ such a change would place even more stress on the definition of these terms resulting in as much, or more, uncertainty; and
there would be a loss of copyright protection in the case of designs for articles that have not been industrially applied.
No 171. The Copyright Act should be amended to include as a non-infringing act the incidental reproduction of the artistic work in two-dimensions in the course of or for the purposes of industrial application.
Not accepted – this recommendation raises concern about unfairly limiting the rights of copyright owners. It is similar to, but broader in scope than, recommendation 180, which the government accepts.
No 172. Works of artistic craftsmanship produced in multiple quantities should continue to be protected by copyright. ‘Artistic craftsmanship’ should be defined in the Copyright Act. The Copyright Act should make clear that a work can be both a work of ‘artistic craftsmanship’ and an artistic work under s 10(1)(a) and (b).
Accepted in part – Works of artistic craftsmanship produced in industrial quantities should continue to receive copyright protection. However, the proposal to define ‘artistic craftsmanship’ in the Copyright Act is not accepted as it is unlikely that this would provide any improvement in interpretation by the courts of the Copyright Act and could add uncertainty rather than clarity. The Attorney-General will raise with the parliamentary counsel the language of the definition of “artistic work” (specifically the language of paragraph 10(1)(c)) when proposing amendments to give effect to these recommendations.
No 173. The exemption for building and models of buildings from the effect of s 77 should continue. In accordance with the Lahore report recommendation it should be made clear that structural articles, such as small portable buildings, registrable under the Designs Act should not receive copyright protection.
Accepted – Australia is required to provide copyright protection for works of architecture under the Berne Convention. Architectural and engineering design deserve the same copyright protection as literature and music as it is a difficult art that involves a great deal of intellectual energy to arrive at a successful result.
No 174. If the Commission’s recommended repeal of the Copyright Act s 74-77 and s 21(3) is not accepted, these provisions should be modified to clarify existing policy.
Accepted – the government notes the policy of these provisions is generally to exclude copyright protection for essentially industrial products. The government will correct the anomalies which possibly defeat this policy. For example, the manufacture of moulds where a drawing of the mould exists: while products cast from the mould are industrially applied the mould itself is arguably not, and therefore manufacture of the mould in order to make the article could indirectly infringe copyright in the drawing of the mould.
No 175. A definition of ‘corresponding design’ should be adopted to the effect that ‘corresponding design’ in relation to an artistic work, means features of shape or configuration, whether registrable under the Designs Act or not, which when applied to or incorporated in an article results in a reproduction of that work.
Accepted in principle – the definition of ‘corresponding design’ should link with the proposed definition as accepted in recommendation 7 (that is ‘corresponding design’ in relation to an artistic work, means visual features of shape or configuration, whether registrable under the Designs Act or not, which when applied to or incorporated in an article results in a reproduction of that work).
No 176. If the proposed definition of corresponding design is adopted, there will be no need to include a definition of ‘applied to’. If that definition is not adopted, a definition of ‘applied to’ should be inserted to the effect that a corresponding design will be taken to be ‘applied to’ any goods, material or thing if it is woven in, impressed on or worked into any goods, material or thing. There should be no reference to surface application.
Accepted in part – The government disagrees that the definition of ‘applied to’ is unnecessary. For some design applications, it is difficult to decide whether a feature forming part of the surface of an article is a feature of shape, or configuration, or one of pattern or ornamentation. Use of the definition of ‘applied to’, proposed by the commission, would help clarify that visible features of shape and configuration woven into, or impressed on, or worked into such items as tapestries, knitted items and carpets would be within the terms of the provision and such items will require design registration if they are to have protection. Tapestries, knitted items and carpets and any other items that are works of artistic craftsmanship would continue to have copyright protection. Copyright protection will also subsist prior to industrial application whether or not the article made is a work of artistic craftsmanship.
No 177. In relation to overseas industrialisation
the Copyright Act s 77 should be amended so when a foreign copyright owner sells or industrialises an artistic work in three dimensions outside Australia the owner of the Australian copyright in the artistic work will lose copyright protection in Australia only if he or she consented to the overseas industrialisation,
the Designs Act s 17A should be amended to mirror this provision,
Section 17A should also make it clear that two-dimensional designs are not excluded from the operation of s 17A.
Accepted in part – The government disagrees with the first dot point, but agrees with the remainder. To amend s 77 of the Copyright Act as proposed by the commission would lead to greater protection than is currently available and conflict with recommendations of both the Lahore and Franki Committees. The government should not give owners of Australian Copyright greater protection than available in the country of industrial application.
No 178. Section 77(1)(b) should be amended to make it clear that it refers to the fact of industrialisation, not the first industrial application.
No 179. The publication of a patent or utility model specification or design representation in Australia, whether Australian or foreign, should be deemed to be an authorised industrial application of a ‘corresponding design’ and offering for sale of articles to which the ‘corresponding design’ has been applied. The manufacture of such articles should not constitute infringement of copyright in the specifications or representations.
No 180. The Copyright Act s 77(2) should be amended to include as a non-infringing act the reproduction of the artistic work in the course of or for the purposes of non-infringing industrial application.
No 181. In relation to transitional provisions
specific transitional provisions should be introduced to put beyond doubt the legal position of manufacturers and traders dealing with products that were industrially applied or sold before 1 October 1990,
savings provisions should be introduced to cover cases where the defence against infringement of copyright in industrially applied products, as it existed before the Copyright Amendment Act came into operation, still applies,
if the Copyright Act s 77 does not provide a defence in relation to acts occurring before 1 October 1990 the defence that was available under the old s 77 should continue to be available.
Accepted in principle – the government will decide on appropriate transitional provisions when drafting the new legislation.
No 182. No substantive changes should be made to the administrative provisions creating the Designs Office and the positions of the Registrar and Deputy Registrar of Designs or to the provisions conferring powers, including the power to delegate, and providing for the seal of the Designs Office.
No 183. There should continue to be provision for an offence of making false representations about the Designs Office.
No 184. The powers of the Registrar to obtain information should be retained but extended to allow the receiving of evidence on affirmation. Parties who appear and give evidence on oath or affirmation should be able to be cross-examined.
No 185. The existing offence in Designs Act s 42B concerning the failure to comply with a summons to appear or to produce a document should be retained in the new designs legislation.
No 186. The existing offence in Designs Act s 42C concerning the refusal to appear as a witness should be retained in the new designs legislation in the same terms.
No 187. The Registrar’s existing power to award costs should be retained in the new designs legislation.
No 188. The legislation should provide that before the Registrar exercises a discretionary power in relation to a design the following persons should be notified and given a reasonable opportunity, to be heard
the person applying for the exercise of that power
the person(s) named on the register as owner of the design
the person(s) who have given the Registrar a notice of their interest in the design, that is, a mortgagee or licensee who has requested an entry to be made recording its interest.
Third parties adversely affected by the exercise of a discretionary power who request a hearing should be given a reasonable opportunity to be heard. The Registrar should give reasonable notice of the exercise of a discretionary power in the Official Journal or an appropriate electronic medium.