7.

Designs
Designs Act 2003 (Cth) Designs protect the distinctive visual appearance of a product Consumers show preferences for products that embody certain styles, colours and shapes To obtain protection, the design must be registered Examples of registered designs: kitchen utensils, cars and car parts, computer keyboards and mice, toys, furniture, telephones, electric shavers, Speedos, embroidery patterns (think Ken Done), an @ letter opener, various shapes of bottles

7.1 Registrable designs 7.1.1 Some definitions

Design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product: s5 Product = a thing manufactured or hand made: s6(1) A component part of a complex product may be a product if made separately from the (complex) product: s6(2) A things which has one or more infinite dimensions is only a product if one or more of the following apply: s6(3): (a) a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern; (b) all the dimensions remain in proportion; (c) the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios; (d) it has a pattern or ornamentation that repeats itself. A kit when assembled which makes a product is taken to be that product: s6(4) Visual feature = in relation to a product, includes the shape, configuration, pattern and ornamentation of the product: s7(1) A visual feature may, but need not, serve a functional purpose: s7(2) Excludes the feel of the product and materials used: s7(3)

Shape, configuration, pattern, ornamentation Same words from 1906 Act Includes both 2D and 3D features: Rollasons Registered Design Colour may be integral part of design: Smith Kline and French Laboratories Ltds Design Application Court is to look from the eye of the informed user: s19(4)

Functional features Designs law seeks to protect the appearance not the function of the thing Designs law has at times struggled to allow protection to useful features even if they are incorporated in visual features: eg a shape was not registrable if it had a utilitarian function only that is if the shape were dictated by the requirement that the article perform a certain task Now under section 7(2) functionality of visual features will be no bar to registration Must be some element of appeal to the eye for functional features: Edwards Hot Water Systems v S W Hart & Co Pty Ltd The focus is on protection of the visual look as that is what consumers look for in a product Hence, competitors can copy all functional aspects of a product as long as they ensure a different external appearance Where three dimensional article Protection is for the design, not the article the purpose of the Act is to give a monopoly over the design, not the article If the article cannot be separated from the design, it is not a design: Re Wolanskis Registered Design neck-tie support the shape defined the article Kestos Ltd v Kempat Ltd brassiere the article itself could not be distinguished from the design

7.1.2 Requirements for registration

A design is registrable if it is new and distinctive when compared to the prior art base as at the priority date: s15(1) The prior art base consists of: Designs publicly used in Australia Designs published in a document anywhere in the world whole contents of earlier (ie priority date earlier than current app), unpublished design applications that are later published (ie publishes after priority date of current app): s15(2) Note same test for regn and infringement so if the prior art is not infringing were it published later, then the design is new and distinctive A design is new unless it is identical to a design forming part of the prior art base: s16(1) A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base: s16(2)

Uses of the design that are to be disregarded for newness and distinctiveness: s17 Publication/use of the design with the consent of the registered owner: s17(1)(a)

At an official international exhibition: Reg 2.01(1) Application must be made w/i 6 months of use: Reg 2.01(3) Must file notice stating the use/publication: Reg 2.01(2) Publication/use of the design without the consent of the regd owner by a person who derived the design from the regd owner or from the regd owners predecessor in title: s17(1)(b) Must still file application for design within 3 months of publication/use: Reg 2.01(3)

Newness A design is new unless it is identical to a design forming part of the prior art base: s16(1) Prior publication = in trade magazines, text books, dictionaries, pamphlets, patent specifications etc: ALRC Report [5.37] Design will not be disqualified b/c it is adapted from something not novel Saunders v Wiel a spoon handle depicting Westminster Abbey was novel even though anyone could go and see the Abbey Note overlap with a design which corresponds with an artistic work in which subsists: s18(2) The design is not to be taken to have been anticipated by the artistic work unless the previous use of the artistic work: Included the sale or hire of products to which the design had been applied industrially (within the meaning of s77 Copyright Act) Was with the consent of the owner of the in the artistic work See Design-Copyright overlap Distinctiveness A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base: s16(2) Cases under the old Act described this as special, noticeable, captures the eye, appeals to the eye, bold, different Standard to be applied is that of the informed user: s19(4) Factors to be considered in Substantial similarity in overall impression State of development of prior art: s19(2)(a) Give regard to features identified in any statement of newness and distinctiveness: s19(2)(b) [or if there is no statement, the appearance of the design as a whole: s19(3)] If only part is similar, have regard to the amount, quality and importance of the similar part in the context of the design as a whole: s19(2)(c) Have regard to the freedom of the creator of the design to innovate: s19(2) (d) More weight to similarities than differences: s19(1)

7.2 Design Ownership

Persons entitled to be entered on the register as the regd owner of the design: s13 a) Person who created design b) The employer if the design was created in the course of employment (unless contrary agreement) c) A person who derives title from someone in (a) or (b) by devolution by will or by operation of law d) A person entitled to the assignment of all exclusive rights in the design e) The legal rep of any person mentioned in (a)-(d) Can have joint ownership of design: ss21(3), 13(3) Where dispute b/w persons as to who is proper person to be on reg, Registrar may make a determination as to who is entitled: s29

7.3 Design Applications 7.3.1 Application

A design application may be in respect of more than one design or in respect of one design that is used on more than one product: s22(1) Registration occurs without substantive examination; formal requirements only are checked: ss24, 39 & 40 Minimum filing requirements: s21(2), Reg 3.01 Information to indicate seeking design reg Info to determine applicant and to contact applicant A representation of each design Priority date is the date of filing application: s27(1)(a) date of filing in any Convention country: s27(1)(b) [as long as within the previous 6 months to filing in Australia] Reg 3.06 filing date is the date that the application meets the minimum filing requirements: Reg 3.05 Application may contain statement as to the new and distinctive features of the design: s69

7.3.2 Registration or publication

Applicant must request either registration or publication: s35 Registration Application proceeds to formalities check: s39-40 Check that design is not excluded by s43(1) circuit layouts, Olympic insignia, or prescribed by regs If passes formalities check (Reg 4.04 formal matters, mounting design etc), Registrar enters into register and publises a notice: s45 If doesnt pass, application given chance to correct: s41

Only amendments that do not seek to include matter not in substance originally disclosed are allowed: s28(3) Where an amendment excludes the design, that design can be applied for again before the grant/refusal or original application and will have priority date of original application: s23(1) [divisional application] Publication Alternative to registration Does not give design protection Prevents subsequent registration of same design by third party May be able to rely on copyright protection Request must be made within 6 months of filing date: s33(1)(a), Reg 4.01 A request for regn can be changed to a request for publication but not vice versa: s38

7.3.3 Examination
Examination now occurs post-grant Any person may request (or a court may order) an examination: section 63 Infringement proceedings cannot be launched until examination has occurred: section 73(3) Registrar must determine whether a ground for revocation exists: s65 Ie if design is not registrable under s15 S51-52 that the person named in the regn is not an entitled person under s13 Excluded design under s43(1) If there is no ground for revocation, a certificate of examination is issued: s67 If grounds for revocation are found: the owner must be allowed to amend: s66(3) or if amendment will not solve the problem, the registration will be revoked: s68 (appeal to Federal Court against decision to revoke: s66(6))

7.3.4 The Register

details set out in register: s111 amended from time to time to reflect changes in ownership: s114 amended if design is revoked by court: s115 can also note persons with an interest in the design ie mortgagees, licensees but not trusts: s117 Register is prima facie evidence of its contents and is kept electronically: s112 Any aggrieved person may apply for the Registrar to correct the register: s120

7.3.5 Term of Registration

Initially 5 years 10 years if renewal fee paid [ie 5 extra years] Starts from filing date of the application: ss 46-47.

7.4 Exclusive Rights

Exclusive rights of a registered owner of a design: section 10 Make, import, sell, hire, use in sale or business, keep (for certain purposes) products which embody the registered design Ownership of registered design: section 14 If owned by more than one person, it is held by them in equal shares as tenants in common All have undivided right to use design None can assign or licence without the consent of the others

7.5 Assignment of Exclusive Rights

The exclusive rights are personal property and are capable of assignment and of devolution by will or by operation of law: s10(2) A registered owner can assign in writing, signed by or on behalf of the owner: section 11 An assignment may be for a particular place Licences do not require same formality

Compulsory licences Can be applied for under s90 Applicant to establish that: s90(3) Design being used overseas Design not being applied to a reasonable extent in Australia Can only be applied for once the design has been examined: s90(2) At end of period of compulsory licence can apply for revocation if regd owner still not using it in Australia: s92 Use by Commonwealth or State Can be used by Cth or State like compulsory licence: s96 Must given appropriate remuneration: s98 Crown can compulsorily acquire design: s106 Crown can force assignment of design: s107

7.6 Revocation s93

any person can apply to court for registration to be revoked, but only if design has been examined: s93 grounds for revocation: s93(3) design not registrable under s15 one or more of the owners was not an entitled person under s13 an entitled person was excluded 6

registration was obtained by fraud, false suggestion or misrep design corresponds to artistic work in which has expired can invoke s93 by way of counterclaim to infringement

7.7 Infringement
Infringement: s71 when the infringer does an act reserved for the registered owner of the design ie makes or offers to make a product which embodies a design that is identical to or substantially similar in overall impression to the registered design: s71(1)(a) sells, hires or otherwise disposes of (c), uses (d) or keeps (e) a product which embodies a design that is identical to or substantially similar in overall impression to the registered design to determine if substantially similar in overall impression see s19 factors and distinctiveness above importation of a product that embodies the design for a trade purpose is an infringement: s71(1)(b) Koninklijke Phillips Electronics NV v Remington Products Australia Ltd 3 head rotary shaver Alleged infringing product had different dimensions on head Held non-infringing May be different under new Act given more weight is given to similarities rather than differences: s19(1) Defendant in infringement proceedings may bring revocation action as counter claim: s74

Spare parts defence: s72 allows use of a product to repair a complex product must be genuine repair purposes does not cover use of the component part as original equipment or non-repair uses onus on regd owner to show that alleged infringer knew the part sold was not the purpose of genuine repair: s72(2) Exhaustion provision defence: s71(2) no infringement for parallel important of products to which regd design was applied with the licence of the regd owner Limitation period: s71(4) Within 6 years from the day on which the alleged infringement occurred

7.8 Infringement Unjustified Threats

Section 77: If a person is threatened with infringement proceedings a court that has jurisdiction to determine the application for: (a) a declaration that the threats are unjustified; and (b) an injunction against the continuation of the threats; and (c) the recovery of damages sustained by the applicant as a result of the threats. Infringement threats made in relation to an unexamined design are unjustified threats: s77(3) Court may grant relief unless examination cert has been issues AND acts which the threats were made about would infringe the design: s78 Can make counterclaim for infringement against claim for unjustified threats: s79 Mere notification of the existence of a regd design is not a threat: s80

7.9 Remedies: s75

Remedies under s75 Injunction subject to such terms as the court thinks fit and at the option of the plaintiff damages or an account of profits A court may refuse to award damages, reduce the damages, or refuse to make an order for an account of profits for innocent infringement For primary infringement (making, offering to make) that means the person has taken all reasonable steps to ascertain whether a registration for the design existed: s75(2)(a) For secondary infringement (importation, commercial dealing) that means that def was unaware and could not reasonably be expected to be aware that the design was regd: s75(2)(b) Awareness is presumed if marks on packaging: s75(4)

Designs Copyright Overlap Occurs where an article that can be registered as a design would otherwise be protected by copyright as an artistic work Copyright protection is removed So the design must be registered in order to receive protection It is thought that the shorter term of design protection is more appropriate Designs Copyright Overlap The possibility of dual protection: the rights of a copyright owner in a two-dimensional artistic work (eg drawings or plans) includes the right to reproduce in a 3-D form: Copyright Act s21(3) a copyright owner has a right to reproduce a 3-D artistic work in a 3-D form Designs Copyright Overlap Copyright Act ss 74-77A Where artistic works are commercially exploited as three-dimensional industrial designs, the copyright owner will be denied the ability to enforce their copyright in respect of those

products Artistic works that are commercially exploited as two-dimensional industrial designs are allowed both copyright protection and protection as a registered design ie (dual protection is allowed for flat designs) Designs Copyright Overlap Section 74 definitions "corresponding design", in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003 "embodied in", in relation to a product, includes woven into, impressed on or worked into the product Designs Copyright Overlap Section 77 provides that where a corresponding design has not been registered, copyright protection will only be lost if the design is applied industrially A design is applied industrially where it is applied to 50 or more articles, or dealt with in other ways Designs Copyright Overlap 2-D drawing protected by copyright artistic work 3-D representation of 2-D artistic work protected by copyright unless it is a corresponding design If it is a corresponding design it does not receive copyright protection must be registered as a design to be protected Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Read pp574-594 Rickertson & Richardson: Intellectual Property Cases Materials and Commentary Fraudsters with fabrics, Weekend Australian, Jan 22-23, 2005