A tale of two systems: comparing Australian and New Zealand designs law

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  • Paul Goodall - Patent & Trade Mark Attorney
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Rationale for the Designs System

Registered designs serve the purpose to protect the aesthetic or visual features of a product from being unlawfully copied. This is in contrast to patents that protect the functionality of a product or process.

In the Explanatory Memorandum in relation to the Designs Bill 2003 (Cth), the purpose of the Australian Designs System was said to be motivated “by giving  designers the exclusive right to exploit their designs for a limited time and prevent competitors free-riding on design innovations”.1

Like other forms of intellectual property, the Designs System is there to stimulate designers to come up with new and distinctive designs for products, and to generate trade and commerce from this by protecting designers from having their designs copied. This is achieved by granting owners of valid designs a limited lifespan monopoly to exploit their designs to the exclusion of others.

Differences between the Australian and New Zealand designs laws

There are a number of important differences between Australian and New Zealand designs laws which became more pronounced when the Designs Act 1906 (Cth) was replaced with the new Designs Act 2003 (Cth) in Australia.

In contrast to Australia, New Zealand designs law has undergone limited change since the Designs Act 1953 (NZ) became law and there is currently no indication that this is likely to change any time soon. Hence, it is important to understand the differences between the two systems when filing in either country, as will be discussed below.

What is a registrable design?

In Australia, the definition of a design, in relation to a product, is “the overall appearance of the product resulting from one or more visual features of the product”.2

A “visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product”.3

Most of these visual features are relatively self-explanatory, with the possible exception of the wording “configuration”. This is best explained in relation to a product such as a telephone which may exhibit more than one configuration, viz when the handset is positioned in the cradle of the phone, and when it is not situated within the cradle. This example exemplifies two possible configurations for the telephone, both of which would be protected under a single registered design.

A “visual feature” does not include:

  • the texture of the product (it doesn’t matter if it is made of velvet, linen, steel)
  • the materials used in the product (it doesn’t matter if the product is made of plastic when all previous products had been made of steel)
  • if the product has one or more indefinite dimensions. If the product also has a pattern that repeats itself such as a tile or a fabric, registration is not available in relation to more than one repeat of the pattern

In contrast to Australia, in New Zealand a registrable design is defined as follows:

design means features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means … but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.4

As is stated above, one notable exception that New Zealand designs legislation has in relation to Australian law is that a design which is dictated solely by its function is not a registrable design in New Zealand while it may be registrable in Australia assuming the design is “new and distinctive”.5

Requirements for registrability

The criteria placed on a registered design vary between the two countries. In Australia a design must be “new and distinctive”,6 while in New Zealand it must be “new or original”.7

In Australia, a design is a “registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design”.8 The prior art base consists of:

  • designs publicly used in Australia
  • designs published in a document within or outside Australia and
  • designs that were disclosed in a design application that has an earlier priority date, and which were published after the priority date of the design application being applied for

A design is “new” unless it is identical to a design that forms part of the prior art base, so assuming the design has not been copied, most designs will meet the criterion of being “new”. A designer can destroy the novelty of their own design by releasing it to the public before filing their design application.

The “distinctiveness” threshold is more subjective and relates to whether the design is distinctive over designs that are part of the prior art. A design is distinctive unless it is substantially similar in overall  impression to a prior art design.

In New Zealand, a design must be new or original over any design that has been registered or published in New Zealand before the date of filing of the design application.

Generally, the threshold for originality in New Zealand is considered lower than in Australia resulting in certain borderline applications being registrable and enforceable in New Zealand and not being enforceable in Australia due to the higher standard of “new and distinctive” imposed on Australian registrations compared to the requirement that a design be “new or original” in New Zealand.

The prior art base for New Zealand designs is also more limited in that it consists only of designs that have been registered or published in New Zealand.

How relevant are physical dimensions in a registered design?

With a registered design, although one is protecting the appearance of the product, the dimensions per se are not being protected. In contrast, what is important is the ratio of the dimensions in relation to each other to generate an overall look.

For example, a scale model based on a real-life automobile may be considered an infringement of a registered design of the real-life automobile even though the size of the real-life automobile and the scale model may be entirely different.

Indeed, it is common practice when filing a design to ensure that no dimensions are listed in the design application as this may unduly narrow the scope of design protection to the dimensions listed.

How is design infringement determined?

In Australia and New Zealand, there is little case law in relation to designs as most matters tend to be handled out of court.

However, the case law that does exist has provided guidance on infringement.

In Australia, when making a determination as to whether a product constitutes an infringement of a registered design, the legal construct of an “informed user” is used. The “informed user” is “a person who is familiar with the product to which the design relates”.9 Under the guise of the “informed user”, the courts then need to assess whether the product is substantially similar in overall impression to the registered design through the eyes of the “informed user”. Under s 19(1) of the Designs Act 2003 (Cth) more weight is given to similarities between the designs than to differences.

In New Zealand, infringement is assessed in relation to an article to which a registered design is applied. The test for infringement is whether the alleged infringement is substantially different to the registered design; if it is substantially different, it will not constitute an infringement. This assessment is determined through the eyes of a customer or consumer.10

In both countries, a design registration for a design as applied to one product does not provide protection for the same design applied to a different product.

Preparing a design application

In filing a design application, it is important that the design has not been disclosed as part of the prior art base as defined above.

However, any public disclosure over the internet will typically preclude registration in Australia and New Zealand.

When a design application is examined, an Examiner performs a search through the relevant prior art bases for any similar designs which were published and/or have an earlier priority date than the applicant’s design. Google searches are not uncommon, and the use of resources such as the Internet Archive Wayback Machine by Examiners of the Australian Designs Office can be used to invalidate a design for not being “new and distinctive”. A prior publication of the design on the internet by the designer can also occasionally be found. The criterion for being “distinctive” tends to vary depending on how crowded the particular design space is. For example, in the field of smart phones, the design space may be crowded with a large number of smart phone designs being filed. In this case, you may find that the level of difference between the applicant’s design and a similar one on the register may be smaller while still meeting the criterion for being distinctive.

In contrast, for designs related to articles in which the market is less crowded, such as vehicles, the design space will be less crowded and the design may need to meet a higher threshold of distinctiveness.

Examination

One major change that occurred under the new Australian Designs Act 2003 (Cth) was the removal of mandatory examination of all registered designs. Prior to the new Australian Designs Act 2003 (Cth), all registered designs were required to be examined in order to be registered — this is no longer the case.

Currently in Australia, registered design applications are only checked for formalities and then registered. They can stay in this format for the rest of their maximum lifespan. However, in order to be enforceable against others, they need to be examined, since a registered design is not enforceable until it has been examined and passed the examination process.

In Australia, a request for examination can be submitted at any time during the lifespan of the design. What many filers in Australia choose to do is file the registered design application, get it registered, and only request examination if necessary (for instance if an infringer comes onto the market and the owner of the design wishes to enforce their rights to the design).

In contrast, in New Zealand, all registered designs are automatically examined and are hence enforceable once registered.

Term of protection

Another difference between the  Australian  and New Zealand designs system involves the maximum term of protection. In Australia, the maximum lifespan of a registered design is 10 years. In New Zealand the maximum lifespan is up to 15 years.

Both of these terms commence from the filing date of the design application. In Australia, the initial period of protection is 5 years, with the option of extending protection to the full 10 years by payment of renewal fees at the 5-year mark.

In New Zealand, fees are payable at the 5th year and 10th year resulting in the maximum 15 years of protection.

Standards for registration

Functionality

In New Zealand, an applicant cannot file a registered design for a product that is purely functional. However, this is not the case in Australia. Hence, if the shape of a product is purely dictated by its function it will not be registrable in New Zealand, however it may be in Australia.

Statements

In Australia, a registered design application may be accompanied by a “statement of newness and distinctiveness”. Such a statement can disclaim certain aspects of the design and provide an emphasis on other aspects of the design.

Similarly, in New Zealand, a registered design application can include a statement of novelty that can claim only certain aspects of the design and disclaim others.

Both countries allow for the claiming of specific aspects of the design, including any of the shape, configuration, pattern and/or ornamentation of the registered design as applied to an article.

Grace periods

A grace period is a period of time in which one may disclose their design to the public prior to filing a design application without invalidating their design application for lack of “newness”.

Australia and New Zealand both offer a grace period for the filing of designs, but only in certain limited circumstances (most of which circumstances are never met). For this reason, grace periods should not be relied on.

Proposed changes to Australian designs law

Although there is no clear indication of the New Zealand Designs Act 1953 (NZ) undergoing any substantive amendments in the near future, amendments to Australian designs law are still in discussion.

In Australia, the Advisory Council on Intellectual Property (ACIP) has provided a number of recommendations in amending Australian design legislation which include:

  • providing a 6-month grace period for Australian designs in relation to newness for any public disclosure of the design made by the designer or their successors
  • altering the potentially misleading naming from “registered design” to a less misleading title such as “uncertified design” for registered designs in which examination has not been requested
  • the possibility of Australia joining the Hague Agreement Concerning the International Deposit of Industrial Designs, which may have the effect of increasing the maximum term of designs protection in Australia to 15 years in alignment with other Hague Agreement countries

These amendments continue to be discussed, however there is no indication of them being implemented in the near future.


Footnotes

  1. Revised Explanatory Memorandum, Designs Bill 2003 (Cth) 2.
  2. Designs Act 2003 (Cth), s 5.
  3. Above n 2, s 7(1).
  4. Designs Act 1953 (NZ), s 2(1).
  5. Above n 2, s 15(1).
  6. Above n 2, s 15(1).
  7. Above n 4, s 5(2).
  8. Above n 2, s 15(1).
  9. Above n 2, s 19(4).
  10. RB Watson & Co Ltd v Smith Brothers Ltd [1963] RPC 147.