Trade Mark News & Information

Amendments to Designs Act

The amendments to the Designs Act 2003 arising from the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 have come fully into force with effect from 10 March 2022.

The amendments include a grace period which will enable a design application to be filed up to 12 months after the design is first made publicly available provided the first publication or use occurred on or after 10 March 2022.

To balance this grace period, a new prior use defence has been introduced such that a design registration cannot be enforced against an alleged infringer’s unauthorised use of the design during the period between the design owner’s disclosure of the design and the filing of the relevant design application.

For designs registered on or after 10 March 2022, the courts have discretion to provide relief to an innocent infringer by declining to make an order for damages or an account of profits for infringement occurring after a design application is filed but before it becomes publicly available and entered on the Register.

An exclusive licensee will now have standing to bring an infringement action.

The option to request defensive publication of a design has been removed and design applications filed on or after 10 March 2022 will automatically be checked for formalities 6 months after the relevant priority date; although applicants will have the option to formally request registration before this 6 months period.

Also, under the amendments which previously came into force from 11 September 2021, the standard of the “familiar person” test replaces the “Informed user” test in assessing whether a design is substantially similar in overall impression to another design.

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