#7326 - Designs - Intellectual Property 1 (Copyright)

• The visual appearance of products has been recognized as fundamental to their appeal and marketability – design laws provide incentives for the effort involved in developing designs through affording designers exclusive rights to deal with products embodying their designs, and preventing others from dealing with products of a similar experience.

• Designs, as a legal concept, only touches on one aspect of designs – that is, visual appearance – the only thing one gets a monopoly on is “one particular individual and specific experience” (other things like ergonomics, safety, durability etc. are irrelevant)

• Thus though while design can incorporate both functional and aesthetic considerations, the former will generally be under the rubric of patent law.

  • The development of CR and patent law has meant designs have somewhat of an awkward and narrow space. In particular Designs was given legislative force in its modern form early, before the dust settled on the scope of CR and patent law. After those laws became more fixed, design protection became marginalised

• In AU the 1906 Act (OA) was the source of designs protection – but having been criticised since it was too easy to obtain registration and that the rights were too difficult to enforce – the Designs Act 2003 (DA) was passed, substantially changing the nature of designs law, and the Designs (Consequential Amendments Act) 2003 made important changes to the CR Act irt the intersection between the two laws.

• S 151

  • S 151(2) of the DA provides that OA designs are taken to be registered under the DA

  • S 151(3) states the OA continues to apply ftpo determining the validity of the registration of old designs

    • s 156(2) provides that actions for infringement of OA designs can be brought under the DA

    • s 156(3) states the OS still applies for determining whether registration of such designs has been infringed

• The Act thus has potential relevance until all OA designs run out – potentially in 2020

• [Some points here are made at the minimal scope of international treaties/agreements]

• Design protection only arises following the process of registration – an application being made to the Designs Office in compliance with the DA and the Designs Regulations 2004 (DR).

S 21

1. A person may file an application (a design application) iro a design

2. A design application must comply with

   1. Any requirements prescribed by the regulations irt representations of designs disclosed in the application; and

   2. Any other requirements prescribed by the regulations

(These are the minimum filing requirements)

4. A design application must specify the entitled person(/s) irt the designs disclosed in the design application

• Reg 3.01 provides that the application must contain

  • Information that identified the applicant and allows them to be contacted; and

  • A representation of the design – either drawing, photograph or specimen (DA s 5)

• A statement of newness and distinctiveness may also be provided to the Registrar of Designs at the timing of filing the application (s 69)

• If the design meets the minimum filing requirement in s 21, the Registrar of Designs (ROD) will notify the applicant of this and give the application a filing date (generally being the priority date of the application)

• The applicant has the choices between two of these.

• Further, the 2003 Act brought about a significant change to the application process – there is no long a requirement for the design to be formally examined before registration to see if it complies with various substantive requirements.

  • The applicant need only request registration of the design(s) disclosed in the application, a formalities check will be completed by the ROD (ss 39-40; reg 4.04).

  • If the application complies with the formalities check, and doesn’t contain a design excluded by s 43b, the ROD must register the design. The ROD then enters particulars in the Designs Register (s 111) and issues a certificate of registration to the applicant, who becomes the RO of the design

• [Publishing] If the applicant requests its design be published instead of registered, the ROD will check that filing requirements are met (s 57, reg 4.15) following which the design is simply published in the Official Journal (good for fast industries where the RO just wants to prevent competitors from copying)

• [Value of registration] The value of registration is limited practically – infringement proceedings cannot be instituted iro a registered design unless the design is examined under Chapter 5, s 73(3).

  • Examination will only take place after registration and on request of a person or the Court (s 63)

  • If the ROD receives such a request they must, under s 65(1) consider whether the registration should be revoked on the grounds that (s 65(2)):

    • The design is not a registrable design (assessed under s 15); and

    • Any other ground prescribed by the regulations (reg 5.02 – that a design shouldn’t have been registered)

  • If the design is held to be valid after examination, a certificate of examination is issued (s 67)

    • If not, the registration must be revoked under s 68

• [TP rights] A third party may also apply to have a registered design revoked in a number of circumstances.

  • They can apply to the ROD under s 52 to have the registered design revoked because:

    • A person(/s) was an entitled person (under s 13) at the time the design was first registered, and one or more of the original ROs of the design was not an entitled person at that time; or

    • Each original RO of the design was an entitled person at the time when the design was first registered, but another person(/s) was also entitled at that time

  • They can, under s 93, apply to a prescribed court for an order that an examined RD be revoked on the grounds in s 93(3):

1. That the design is not a registrable design; or

2. That one or more of the original ROs was not an entitled person irt the design when the design was first registered; or

3. That each of the original ROs was an entitled person irt the design when the design was first registered but another person(/s) were entitled persons irt the design at that time; or

4. That the representation of the design was obtained by fraud, false suggestion or misrepresentation; or

5. That the design is a corresponding design to an artistic work, and copyright in the artistic work has ceased

• In the past design laws have attempted to draw a distinction between an ‘article’ or ‘product’ and the visual appearance thereof (and thus giving protection only to the latter).

S 5 – DA

Design irt a product, means the overall appearance of the product resulting from one or more visual features of the product

S 6 - ‘product’ is defined as:

1. Ftpo this Act, a thing that is manufactured or hand made is a product

2. A component part of a complex product may be a product ftpo this Act, if it is made separately from the product

3. A thing that has one or more indefinite dimensions is only a product ftpo this Act if any one or more of the following applies to the thing:

   1. A cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern

   2. All the dimensions remain in proportion

   3. 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;

   4. It has a pattern or ornamentation that repeats itself

4. A kit which, when assembled, is a particular product is taken to be that product

S 7 - ‘visual features’ is defined as

1. Visual feature, irt a product, includes the shape, configuration, pattern and ornamentation of the product

2. A visual feature may, but need not, serve a functional purpose

3. [Deemed not visual features] The following are not visual features of a product

   1. The feel of the product;

   2. The materials used in the product;

   3. In the case of a product that has one or more indefinite dimensions:

      1. The indefinite dimension; and

      2. If the product also has a pattern that repeats itself – more than one repeat of the pattern

1. It contemplates the existence of a 3D manufactured or hand-made thing (s 6(1)) that has a particular appearance

   1. This thing can have a number of indefinite dimensions (e.g. a piece of industrial piping cut to size) so long as s 6(3) is satisfied

   2. But the requirement of a 3D thing iro which the design is embodied excludes from protection certain features that are generally thought of in terms of design

      1. Thus in Microsoft Corporation [2008] ADO 2 the applicant attempted to register a design over a Type Font. It was noted that a type font generally exists as a binary file which is used to control how information is presented on computer output (monitor, printer etc.).

      2. But this design did not show a product bearing visual features – it showed a collection of visual features intended to be applied to unspecified products in unspecified arrangements

      3. The design therefore, did not disclose a product bearing visual features – but instead only disclosed visual features

2. Once the 3D product is identified, the visual features can themselves be 3D (e.g. lamp shape) or 2D (a pattern on a t-shirt) or a combination thereof (a dress). This is particular important in the CR overlap

3. The definition of ‘visual features’ is non-exhaustive. Thus features like the look of a surface or the colour of a product can well be part of the design

   1. The practical effect being design...