Registered Designs - Topic 11 The designs system Protects appearance of objects such as household appliances, furniture, cars etc.

. True monopoly; reg. protects design against another; whether created independently or not. Duration of protection is short. Protection conferred from date reg. application is lodged: s46 Artistic works; if design reg. under CR & subsequently registered as design reproduction right is lost. How the system works IF you have an interest in the design you apply to register it with the registrar of Designs Who can get a design registered? S13 person who created the design: s13(1)(a) Authorship: Creator/author will be person whose mind conceived the shape, configuration, pattern or ornamentation of the article (person who reduced it to visible form): LED Technologies [2008] Where created under contract or employment; employer/commissioner entitled to register:13(1)(b) Person whos name is on the register is the owner: s14 Multiple registered owners have equal undivided share in the design: s14(2) Property Rights Right is personal property, capable of assignment & devolution by will or by operation of law (i.e. under insolvency): s10(2) Monopoly only applies in Australia: LED Technologies [2008] May assign all or part of interest: s11 Assignment must be in writing, signed by/on behalf of assignor & assignee & may apply to a particular place: s11 (may only grant rights in Victoria for instance) The application Design applications: s3 Applications must comply with the regulations: s21 You can identify features of design as new & distinctive: s19(2) when applying for registration. May request reg. publication upon application or within a period prescribed by the regulations. Application may relate to: o one design, for one product; o one design that is a common design in relation to one product; or o more than one design in relation to one product, if each product belongs to the same Locarno agreement: s22 The priority date; date of filing: s27 Term of registration runs from priority date: s46 Also need to establish at this date that the design is new and distinctive. Designs that cannot be registered S43(1)(a) registrar must refuse to register unregistrable designs under s43(1)(a): Regulation 4.06. S43(1)(a)-(g): Medals, ANZAC regulations designs, 19(2) Crimes Act designs, scandalous deigns, arms/flags/seal of Commonwealth/State/Territory, armorial bearings, flags, state emblems or other signs of the country.

Initial registration and public inspection Upon receipt of an application registrar will (if valid) notify applicant of validity, filing date & a request for reg. or publication may be made: s24 Registrar will publish prescribed details of the application: s25 No formal examination of the design takes place at this stage: Designs bill 2003 EM Registrar must register the design if it complies with the necessary formalities & isnt prohibited: s39 Upon registration/publication the entire design application will be available for inspection: s60 Examination will only occur where specific request is made by any person or court orders it: s63 Registrar may examine design on their own initiative Applicants/opponents may seek examination: opponents may offer material indicating that the design is not new or distinctive: s69 Upon examination the registrar will consider whether the design registration should be revoked: s65 Where registration is found to be valid a certificate of examination will be issued: s67 Term of registration + Renewal Term of registration is 5 years from filing date: s46(1)(a) If renewal is granted, the design protection will run until 10 years from filing date: s46(1)(b) this is max period of protection under international obligations Actions for infringement Where infringement occurs, can take legal action for injunction, damages or account of profits. Defendant can counterclaim for expungement of your design. S73: sets out infringement proceedings Proceedings may not be bought until the design has been examined & a certificate of examination has been issued: s73(3) Court may refuse award of account of profits/damages if def. can prove that it was not aware of the registration OR that it took reasonable steps to ascertain whether the design was registered. These defences apply if the def. is accused of primary infringement - infringement through use of design or a product: s7(1)(a)) Where secondary infringement is concerned (sale or importation of infringing articles: s71(1)(b), (c), (d), (e)) the defendant must prove to the court that it was not aware and could not reasonably have been expected to be aware, that the design was registered. Additional damages may be awarded taking into account flagrancy of infringement & other relevant matters: s75(3) In s75 the word registered means certificate of registration must have been issued. Revocation of registration Registration may be challenged - never guarantees a designs protection S93 allows a defendant to counter-claim for revocation of registration: s93 Upon any examination of a design the registrar will consider whether it should be revoked. Fees : See schedule 4 Typical Time line of an application May 2005 a new dress design created; 24 June 2005 - design application made (this is the priority date); September 2005 another party copies design (having seen garments in the shops) 14 November 2005 applicant requests registration;

9 December 2005 Registrar notifies applicant that application meets minimum filing requirements and has been given filing (priority) date of 24 June. This is the point at which the public is informed that registration is pending for ladies garments. No picture of the design available; 2 June 2006 Registrar issues Certificate of Registration of design 7 entire application becomes available for public inspection; 7 June 2006 infringing party warned by applicant of possible infringement; 13 July 2006 Registrar certifies examination of design completed; 19 September 2006 legal action for infringement commenced.

Unjustified threat of legal action Dont make unjustified threats of legal action be sure of validity of claim If a certificate of examination has not been issued in respect of a design, a threat to bring about infringement proceedings will be unjust Recipient of threat can take legal action: s77 Declaration, injunction or damages may be awarded against the registered design owner. Test: to escape liability for unjustified threat owner needs to show that: - Design is registered - Has been examined - Certificate of examination has been issued; and - Acts complained of infringe the design: s78 Owner can counterclaim for infringement by the complainant against who it has made threats: s79 Safer for the registered design owner to notify other party pursuant to s80 notify party of the existence of the design and if matter is not resolved commence legal proceedings.

Registrability Is it a design? Design: s5 o In relation to product means overall appearance resulting from one or more visual features. Visual features: s7 o Includes shape, configuration, pattern & ornamentation of product. o Shape + configuration = 3D; pattern + ornamentation = 2D. What is a product? Product means something produced not occurring in nature: s6(1) S6(2)-(4) defines product further: 2. Component part of a complex product may be a product, if made separately from the product. 3. Product with Indefinite dimensions is only a product if: a. a cross-section of any indefinite dimension is fixed or varies according to a regular pattern; OR b. all the dimensions remain in proportion; OR 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; OR d. it has a pattern or ornamentation that repeats itself. 4. A kit which, when assembled, is a particular product = that product. Complex products (engine in a car, piston in an engine) S5: A product comprising 2+ replaceable component parts permitting disassembly & re-assembly of product i.e. car, lawn mower. Design must exist in relation to a product as in separately from it. It is the conception/suggestion/idea of the visual image of a device which can be applied to a product by manual/mechanical/chemical means. Characteristics of a product In addition to the characteristics above in s6(1)-(4) characteristics may also include: Large objects that are or become attached to a site: i.e. pool in kit form, only size differentiates it from a bath and it is manufactured away from site of installation. It is not important to be able to establish the proportions/dimensions of the article that a design is to be applied to when registering the design. Sufficient if it shows a shape with enough individuality of appearance to distinguish it & to enable it to be determined by visual comparison whether the shape of an article is either the same as, or nothing more than an imitation of, that disclosed by the registered design: Malleys (1961) Fundamental form Fundamental /generic form or shape of article is not an aspect of design. I.e. fundamental design of a chair is not a registerable design (raised horizontal or semi-horizontal support for human buttocks, probably with a back to distinguish it from a stool). Anything which turns form into something visually distinctive or different will be an aspect of design. No design protection exists for a globe of the world as the spherical shape is an aspect of the article.

A visual feature S7: defines visual feature 1. "visual feature" re: product = shape, configuration, pattern & ornamentation of product. 2. Visual feature may serve a purpose or not. 3. Following NOT visual features of a product: a. feel of the product; b. materials used in the product; c. in the case of a product that has one or more indefinite dimensions: i. the indefinite dimension; and ii. if the product has a pattern that repeats itself--more than one repeat of pattern. When determining newness and distinctiveness: Apply standard of a person who is familiar with the product to which the design relates: s19(4) Review 2 Pty Ltd [2008] Ladies clothing comparison products to ascertain similarity/distinctiveness Standard of informed user is objective Familiarity with product must be greater than the information possessed by the average user Focus should be on eye appeal & not internal or less visible features. What is needed to have product familiarity? Notional user was women but not all women are familiar with the brand Review. Perspective of person who has greater knowledge than the average user of the product should be used to determine newness & distinctiveness between the Review and Redberry brands. What is a visual feature? Features must be visible: i.e. not the way it feels unless it feels that way because of a visual feature. Colour how much weight should be given to colour? Review v Redberry: Significance of colour/pattern dependent upon product. Everything shown in the registered design (unless disclaimed) is protected subject matter. Thus pattern (including colour) is part of what is protected. Held: dramatic visual differences between the Review & Redberry dress. Colour & prints were very different. This was important because the colour & pattern made an important contribution to the overall impression each dress created. The fact that design performs a function will not defeat registration Design exhibiting features of shape/configuration that are functional will not preclude registration. Not necessary that designer intend to create visual appeal: s7(2). Function does not receive protection - Only the visual feature associated with the practical function. E.g. Biro has grooves around the shaft; function is practical to make the biro easier to grip. The grooves can be registered as aspects of design. But this will not protect the design against another person using the grooves to improve grip.

Methods or principles of construction alone = not patentable Purported design NOT registerable if it is only a method or principle of construction. Malley Ltd v JW Tomlin (1961): It is not the function of design to indicate a process of manufacture. Patents law protects methods etc. law seeks to prevent an overlap between two forms of monopoly. Prohibition not stated in new Act, but no doubt remains. Must distinguish principles of construction from products visual configuration which is registerable. E.g. Pugh (1912) Corset was argued to be distinctive because the gores and gussets were all cut horizontally from front to back. All corsets made this way would have had similar visual characteristics, but that was not enough to achieve registration. The cut of the corset was a conception as to method of construction only (and would have permitted differences in shape). This was a case of construction leading to a particular appearance. Problems arise where method of construction is presented to the Registrar as if it were the design in this instance = unregistrable. Newness and distinctiveness Must be established S15(1) design is registerable if it is new and distinctive when compared with prior art base as it existed before the priority date of the design. EM states: requirement is a filter to eliminate identical designs. Term distinctive requires greater differentiation from previously published or used designs: 11. The fact that newness AND distinctiveness must be established raises the registerability threshold. Definitions New - A design = new unless identical to a design forming part of prior art base: s 16(1). Distinctive - A design will be distinctive unless substantially similar in overall impression to a design that forms part of the prior art base: s 16(2). Further meaning of distinctive in the case of LED Technologies [2008] o Expresses the quality that a design must have to differentiate it sufficiently from previously published or used designs. o For a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. Prior art base All designs for the product that existed before the application date. Defined precisely as: s15(2) o (a) designs publicly used in Australia; o (b) designs published in a document in/outside Australia; o (c) designs in relation to which each of the following criteria is satisfied: (i) design is disclosed in a design application; (ii) design has an earlier priority date than the designated design; (iii) the first time documents disclosing the design are made available for public inspection under s 60 is on or after the priority date of the designated design. Design that combines various features, which can be found separately in the prior art base when considered as a whole but not in one piece, is capable of being new/distinctive: LED Technologies [2008] Design must only be compared with single designs which existed in the PAB. PAB includes uses in Australia or publications anywhere in the world. PAB designs must have prior priority date earlier than design for which registration is sought. 6

Substantially similar: S16(2) refers to substantially similar. S19(1) Decision maker must give more weight to similarities between designs than to differences. Minor or insignificant changes to a design are irrelevant if the overall impression remains one of substantial or significant similarity: Designs Bill 2003 EM Other factors to be taken into account: o the state of development of the prior art base for the design; o creators freedom to innovate (given nature of product); and Example: racing boat hull appearance will be determined largely by the function o Any statement of newness and distinctiveness accompanying the design application. Any features in a statement accompanying the design application should be given extra weight, within the whole context of design: s 19(2). If the product is common & there are many designs in the market, likely that limited changes to those existing designs will be enough to establish newness and distinctiveness. Factors to be disregarded when determining newness and distinctiveness Certain uses of the design (under 2.01) with consent of registered owner may be disregarded:s17(2). Use or publication of design without authors consent if the act has been carried out by a person who acquired the design from the registered owner. In order for these uses to be disregarded, the design application has to be made within the required time: prescribed in the Regs 6 months from publication etc. under Reg 17(3): s 17(2). Prior publication or use A design which has been published or used prior to registration being sought will have lost its claim to newness and distinctiveness. Use = application of design to articles in a way which allows the public to become aware of the design. Publication involves making a design known or available to the public: J Rapee (1990) What is publication to the public? May result from advertisement in a trade catalogue: Stratford Auto Components (1961) For this to = publication reader must form a fair perusal of the material to be able to see the design in his mind's eye or something substantially the same with reasonable clarity: Rosedale (1957) Info must be publicly available in Australia, even if no disclosure to individual member of public. E.g. alleged anticipation had been held for many years in a library: World of Technologies The overlap with copyright law To be registerable design must be new or distinctive. It will not be new if it has been previously published. Design can still be registered where based on artistic work made available to the public: S18. Section 18, Designs Act: Applies where: a. CR under the Act subsists in an artistic work; and b. application is made by/with the consent of CR owner for registration of a corresponding design. 2. Design will be new and distinctive unless previous use included: a. sale, hire or exposing for sale/hire of products to which the design had been applied industrially; other than products specified regulations for the purposes of para 43(1)(a); and b. previous use was by, or with consent of CR owner in the artistic work. 7

Corresponding Design: Copyright Act S74-77A s74(1) Copyright Act; 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. Reproduction = reproduction in a 3d or 2d form: CR Act s 21(3). Embodied in means: woven into, impressed on or worked into the product: CR Act 1968 S74(2). Logo embroidered on shirt not considered embodied in the garment: The Polo/Lauren Comp [2008] To emobody the garment the logo must give material and discernible form to the shirt/design. Court expected that a design embodied in a product would affect the appearance of the whole product and would not just constitute a spot on the product. Applied industrially: in s18 defined by reg 17 of the CR Regulations 1969: 1. A design is taken to be applied industrially if applied: a. to more than 50 articles; or b. to one or more articles (other than hand-made articles) manufactured in lengths or pieces. 2. For the purposes of paragraph (1) (a), any 2 or more articles: a. that are of the same general character; and b. that are intended for use together; and c. to which the same design, or substantially the same design, is applied; are taken to constitute a single article. 3. For the purposes of this regulation, a design is taken to be applied to an article if: a. the design is applied to the article by a process (whether printing, embossing or otherwise); or b. design is reproduced on or in the article in the course of its production. Industrial application: International Pty Ltd [2005] Industrial application - deemed to have taken place if design is applied to more than 50 articles. Where applied to less than 50 question of whether industrial application is present will depend on facts of the case and the type of product. Example: Safe Sport Australia (1985) o Prototypes of plaintiffs helmet were not an industrial application. o installation in prototype bus of 41 seats was considered an industrial application of the design for the seats: In Press-Form P/L (1993) Implications for CR loss of protection against reproduction Where corresponding design has been registered: Where CR subsists in an artistic work and the same design is registered under the Designs Act CR reproduction right is lost: S75 CR Act. Only the design registration may be relied upon. CR protection still exists for other purposes & will cover uses outside of the design monopoly. o E.g. publication or communication to the public. Unregistered design may still lose CR reproduction right: S77 CR Act. Artistic works (except buildings, models of buildings & works of artistic craftsmanship) lose protection against reproduction if the design is applied industrially with CR owners licence & the goods are marketed.

Will also be lost if image of product made to correspond w/design is disclosed in a patent or design application & subsequently published in Australia.

Where design is excluded from design registration Full CR protection will be retained. What happens when you lose reproduction right? No infringement of the reproduction right in the CR work when the corresponding design, or any other corresponding design, is embodied in a 3D form. S77A(1) not an infringement of CR in artistic work to reproduce it, or communicate it, if the reproduction is derived from a 3D product that embodies a corresponding design in relation to the artistic work, & the reproduction is in the course of, or incidental to, making a product that does not infringe CR because of the operation of Div 8 of Part III of the Copyright Act. A reproduction or communication is not an infringement of copyright where the reproduction is for the purpose of selling or letting for hire the non-infringing product or offering or exposing the noninfringing product for sale or hire. The communication of a reproduction in this provision will allow non-infringing products to be advertised and sold to the public using on-line communications systems such as the Internet without infringing CR in an artistic work that relates to the corresponding design. S77A(2): not an infringement of CR to make a cast or mould embodying a corresponding design if the cast or mould is for the purpose of making products that would not infringe CR. S77A establishes defence to CR infringement for certain acts that occur in the course of, or incidental to, making non-infringing products. S75 & 77 permit 3D products to be reproduced without infringing CR in an artistic work that relates to the design. A drawing or plan made in course of manufacturing non-infringing 3D products may infringe CR in the original drawing or plan. Exclusive rights Exclusive rights of the registered design owner: s10(1) 1. The registered owner design has exclusive right, during term of registration: a. to make/offer to make a product, in relation to which the design is registered, which embodies the design; and b. to import such a product into Australia for sale, or for use for the purposes of any trade or business; and c. to sell, hire, dispose of, or offer to sell, hire, dispose of product; and d. to use product for trade or business; and e. to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d); and f. to authorise another person to do any of the things mentioned in paragraph (a), (b), (c), (d) or (e).

The infringement Infringement: s 71 a. Person infringes a registered design if while design is registered & without the licence/authority of the regis. owner of the design, the person: a. makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; or b. imports product into Australia for sale, or use for purposes of any trade or business; or c. sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product; or d. uses such a product in any way for the purposes of any trade or business; or e. Keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d). Note: allegedly infringing product is to be compared with the design as regisd: LED Technologies [2008] Substantial similarity will be determined with regard to s19. More weight to be given to similarities than to differences between the designs: s19(1). The decision maker will also consider: o Design owner has 6y to bring legal action: s71(4). o Infringement action can be taken only if the design has been examined & certificate of exa. Exceptions to infringement parallel importation S71(2): person does not infringe a registered design if: a. person imports a product, re: design as registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; and b. the product embodies the design with the licence/authority of the registered owner. If the design has been applied overseas with licence/authority of the Australian registered owner (where the products have been manufactured by an overseas subsidiary of owner) then importation of the overseas products will not infringe. Exceptions to infringement spare parts Exceptions to acts that infringe: 30 of the Designs Act 2003 Explanatory Memorandum Repair of complex product: Where product is component part & its use is for the purpose of repairing the complex product to restore its overall appearance in whole/part no infringement: s 72(1) Example: Replacement muffler for Toyota car. Where raised as a defence design owner must prove that the person knew or ought reasonably to have known that the act carried out was not for the purpose of restoration. E.g. product was to be used in the manufacture of new vehicles or other complex products. Complex product: comprises at least 2 replaceable component parts permitting disassembly and reassembly of the product: s5. E.g. A car. Repair includes restoring decayed/damaged component part of the product to a good or sound condition, the replacement of parts, replacing items within parts, or carrying out maintenance on the product: s 72(5). Restoration of overall appearance in whole: This is where the overall appearance of the complex product immediately after the repair is not materially different from its original overall appearance: s 72(3). 10

Restoration of overall appearance in part: This is where the overall appearance of the complex product immediately after the repair is solely attributable to the fact that only part of the complex product has been repaired: s72(3). The standard of the informed user is used to make these judgments: s72(4), 72(5).

Remedies S75: injunctions (plaintiffs choice of) damages or account of profits. Account of profits may not be awarded if the def. was not aware at the time of the infringement that the design was registered provided the def. had also taken reasonable steps to find out. Additional damages may be awarded for flagrancy of breach & other relevant matters.

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