ALRC 74 Designs Contents

ALRC 74 Designs Contents Terms Of Reference Overview 1. INTRODUCTION This review of the Designs Act Related reviews and initiatives Consultations Outline of this report Aboriginal designs Acknowledgments 2. DESIGNS AND THE LAW Introduction The nature of modern design The place of design in intellectual property laws Past reviews and present dissatisfaction 3. REFORM OF DESIGNS LAW Introduction Objectives of designs law Economic benefits of design protection International implications Reform of designs law - main issues Recommended framework for the new designs legislation 4. WHAT IS A DESIGN? Introduction The definition of design The products for which designs can be registered Attractiveness and related limits to design protection Functional limits 5. THE INNOVATION THRESHOLD Introduction The present tests Two step novelty and distinctiveness test Defining distinctiveness Defining the prior art base Novelty and disclosure 6. WHEN IS A DESIGN INFRINGED? Introduction Infringement The proposed test for infringement Applying the infringement test Factors considered in deciding infringement Relevance of intention to infringement Secondary or indirect infringement Infringement for non-commercial purposes The rights included in the design right 7. OWNERSHIP OF DESIGNS Introduction Ownership of designs before registration Owner of registered design Registering an interest in a design Recording ownership changes Designs Act Part VIA - Crown use 8. THE REGISTRATION SYSTEM Introduction Protection to be based on registration Optional publication or registration system Obtaining a priority date Examination of the application before proceeding to registration Formal examination 9. REGISTRATION PROCEDURES Introduction Decision to register Applying for registration The register Offences concerned with the accuracy of the register 10. DURATION OF THE DESIGN RIGHT Introduction 15 years protection Renewal system Extensions Protecting third parties Voluntary surrender 11. CHALLENGING THE REGISTRATION OF A DESIGN Introduction No opposition before registration Opposition after registration Challenging validity by way of examination procedures Examination procedures 12. REVIEW OF THE REGISTRAR'S DECISIONS Introduction Preferred avenues of administrative review Which decisions of the Registrar of Designs should be reviewable? Extending AAT review of decisions 13. ENFORCEMENT AND DISPUTE RESOLUTION Introduction Enforcement A new industrial property court? Federal Court and Supreme Court Jurisdiction Jurisdiction of the lower courts Role of AIPO opinion on questions of fact Procedural Reforms Alternative dispute resolution 14. REMEDIES AND OFFENCES Introduction Injunctions Damages Account of profits Innocent infringement Conversion and detention damages Delivery up Anton Piller orders Unjustified threat of infringement proceedings Making infringement a criminal offence Role of marking in obtaining remedies Compulsory licensing 15. PARALLEL IMPORTS Introduction Regulation of parallel imports in Australia Economic issues International context Options for reform Customs power of seizure 16. SPARE PARTS Introduction Which spare parts are in issue? Assessing anti-competitive effect Options for reform Stage 1: Identifying potentially anti-competitive designs Stage 2: TPC assessment of anti-competitive effect Procedural aspects Impact of proposed reform 17. DESIGN/COPYRIGHT OVERLAP Introduction What is the design/copyright overlap? Recommended reform of design/copyright overlap Categories exempt from the loss of copyright Alternative option to modify existing provisions Options not recommended 18. ADMINISTRATION Introduction The administration of the Designs Office Registrar's powers to obtain information and award costs Exercise of discretionary power by Registrar Liability of officers 19. LIST OF RECOMMENDATIONS Appendix A: Draft Clauses Appendix B: System Of Review Of Registrar's Decisions Appendix C: Report Of The Results Of A Survey Of Persons Who Use The Designs Registration System Under The Designs Act Appendix D: List Of Submissions And Select Consultations Appendix E: Participants Appendix F: Abbreviations Appendix G: Select Bibliography Table Of Cases Table Of Legislation Table Of Treaties Index This Report reflects the law as at 30 June 1995 © Commonwealth of Australia 1995 This work is copyright. Apart from any use as permitted under the Copyright Act 1968, no part may be reproduced by any process without written permission. Inquiries should be directed to the Manager, Commonwealth Information Services, Australian Government Publishing Service, GPO Box 84, Canberra ACT 2601. ISBN 0 642 22986 4 Commission Reference: ALRC 74 The Australian Law Reform Commission was established by the Law Reform Commission Act 1973. Section 6 provides for the Commission to review, modernise and simplify the law. It started operation in 1975. The main office of the Commission is at Level 10, 133 Castlereagh Street, Sydney, NSW, 2000, Australia. The Commission also has an office in Canberra. Terms of reference COMMONWEALTH OF AUSTRALIA Law Reform Commission Act 1973 1. I, Michael Duffy, Attorney-General of Australia, at the request of the Minister for Industry, Technology and Commerce, and having regard to the need: • to ensure that the protection afforded to industrial designs under Australia's industrial designs system is adequate and appropriate; and • to modernise and simplify, and to remove difficulties that have arisen in the operation of, the Designs Act 1906; and • to ensure that persons whose rights under that Act have been infringed have access to a quick, cheap and effective remedy; refer the Designs Act 1906 to the Law Reform Commission for inquiry and report under the Law Reform Commission Act 1973 section 6. 2. In carrying out its work under this reference, the Commission is to: • consult relevant federal departments and agencies, designers, manufacturers and any other persons it thinks fit; • have regard to the protection afforded to industrial designs in other countries; and • have regard to Australia's international treaty obligations. 3. The Commission is to prepare the detailed drafting instructions for the legislation (including any necessary subordinate legislation) necessary to implement its recommendations. 4. The Commission is to report as soon as practicable, but not later than November 1995. Date: 18 August 1992 Attorney-General Overview What this report is about This report is about encouraging innovation in the design of products. The owners of designs are currently granted exclusive rights for this purpose under the Designs Act 1906 (Cth). But there are issues about how well Australia's current designs law works. The Commission was asked to review the Designs Act to modernise and simplify it and to address those issues. The report concludes that the current system of registered design rights needs to be improved by clearer definitions, stricter eligibility and infringement tests, a more streamlined registration system and better enforcement and dispute resolution procedures. This is one set of reforms but it is not a complete solution. The other reform required is the introduction of a broad, unregistered anti-copying law. This latter reform goes beyond designs law and the Commission's terms of reference. It is therefore recommended that it be reviewed separately in the context of Australia's intellectual property laws as a whole. Particular consideration should be given to unfair copying and unfair competition laws. What sort of designs law is required? Australia's designs law needs to be tailored to meet its main objective - to encourage innovation in Australian industry to Australia's net economic benefit. Designs law can do this by preventing competitors free riding on design innovations and by providing investors in design with security for their investment. Meeting this objective is not simply a matter of granting exclusive legal rights to all design activity. New design innovation depends to some extent on being able to use and apply previous design innovations. Design rights must not be so restrictive that they act as a barrier to further innovation in industrial design. Current designs law is not striking an effective balance. It does little to prevent free riding. Many design owners consider that it is not cost effective. Insurance and consumer groups consider that it provides monopoly rents in areas like car spare parts. There is also a widespread view that it should protect the way a product works not just how it looks. In striking a balance there are many factors to take into account. The range of activities undertaken by contemporary designers has changed and expanded significantly since the Designs Act was passed in 1906. This suggests that design rights should be broadened. But any such expansion needs to be assessed in terms of its economic impact, the international context and the other forms of legal protection that are available, particularly copyright, patent, petty patent and trade marks and the laws on passing off, breach of confidence and misleading and deceptive conduct. Designs law has a fairly narrow role within the pattern of laws designed to encourage innovation. Any reform that would restructure that pattern should only be considered in light of Australia's intellectual property laws as a whole. These considerations have led to the recommendations to improve the current designs law broadly within its current scope but also to consider an anti-copying right as part of a broader reform of intellectual property

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