Previously, Registered Designs had an absolute novelty requirement, which meant that if the design had been previously published, even just a day earlier on social media, for example, the designer was unable to obtain a Registered Design for that design.
The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (the Act) addresses this issue by introducing a grace period. The Act received Royal Assent on 10 September 2021, and Schedules 1-6 and 7 part 3 (which include the design grace period provisions) commence on 10 March 2022.
Schedule 1 of the Act introduces a 12-month grace period for the filing a design application.
This grace period enables those who disclose their design (or a variant thereof) to still obtain valid design protection, provided that their application for design registration is filed within 12 months of their first disclosure.
This is particularly useful when designs are accidentally disclosed, and for first-time designers, who may not even have known about registered designs at the time of their disclosure. As an example, a designer who publishes details of his or her design on social media may use the grace period to file an application for a registered design within 12 months.
As outlined above, Schedule 1, which includes the design grace period provisions, commence 10 March 2022.
While it enables publications to be disregarded under the grace period, it only applies “in relation to a publication or use that occurs on or after the commencement of Schedule 1”, i.e. only publications made on or after 10 March 2022 may be disregarded under the grace period.
Unlike the grace period for patents, the grace period for designs has an important exception, namely that designs published by the Registrar of Designs, or similar bodies in other countries (e.g. Designs Offices overseas), are not able to be disregarded under the grace period.
As such, it is important that any design applications filed outside of Australia are either filed in Australia before publication by the designs office overseas, or using the Paris Convention and claiming priority to the overseas filing.
Another reason to avoid using the Grace Period, where possible, is that there is a prior use infringement exemption.
A person is not taken to infringe a registered design if before the priority date of that design:
(c) the person had:
(i) made a product, in relation to which the design became registered, which embodied a design (the comparable design ) that was identical to, or substantially similar in overall impression to, the design that became registered; or
(ii) imported such a product into Australia for sale, or for use for the purposes of any trade or business; or
(iii) sold, hired or otherwise disposed of such a product; or
(iv) used such a product in any way for the purposes of any trade or business; or
(v) kept such a product for the purpose of doing any of the things mentioned in subparagraph (iii) or (iv); or
(d) the person had taken definite steps (contractually or otherwise and whether or not in Australia) to do an act covered by paragraph (c).
In other words, if a third-party copies or independently creates a design, or has taken definite steps to, during the grace period, they may have a prior use infringement exemption.
As such, it is important that an application for design registration be filed as soon as possible in the grace period, to reduce the amount of time third-parties have to copy the design.
The 12-month grace period for the filing a design application is probably best seen as a safety net, as it potentially has exceptions, and potentially allows a third-party to avoid infringement.
If you have any questions around Registered Designs, please do not hesitate to contact us at Kings Patent and Trade Marks Attorneys. You can book an online, phone or in person meeting with one of our attorneys here.