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Designs
Designs Act 2003 (Cth) Designs protect the distinctive visual appearance of a product Consumers show preferences for products that embody certain styles, colours and shapes To obtain protection, the design must be registered Examples of registered designs: kitchen utensils, cars and car parts, computer keyboards and mice, toys, furniture, telephones, electric shavers, Speedos, embroidery patterns (think Ken Done), an @ letter opener, various shapes of bottles
Shape, configuration, pattern, ornamentation Same words from 1906 Act Includes both 2D and 3D features: Rollasons Registered Design Colour may be integral part of design: Smith Kline and French Laboratories Ltds Design Application Court is to look from the eye of the informed user: s19(4)
Functional features Designs law seeks to protect the appearance not the function of the thing Designs law has at times struggled to allow protection to useful features even if they are incorporated in visual features: eg a shape was not registrable if it had a utilitarian function only that is if the shape were dictated by the requirement that the article perform a certain task Now under section 7(2) functionality of visual features will be no bar to registration Must be some element of appeal to the eye for functional features: Edwards Hot Water Systems v S W Hart & Co Pty Ltd The focus is on protection of the visual look as that is what consumers look for in a product Hence, competitors can copy all functional aspects of a product as long as they ensure a different external appearance Where three dimensional article Protection is for the design, not the article the purpose of the Act is to give a monopoly over the design, not the article If the article cannot be separated from the design, it is not a design: Re Wolanskis Registered Design neck-tie support the shape defined the article Kestos Ltd v Kempat Ltd brassiere the article itself could not be distinguished from the design
Uses of the design that are to be disregarded for newness and distinctiveness: s17 Publication/use of the design with the consent of the registered owner: s17(1)(a)
At an official international exhibition: Reg 2.01(1) Application must be made w/i 6 months of use: Reg 2.01(3) Must file notice stating the use/publication: Reg 2.01(2) Publication/use of the design without the consent of the regd owner by a person who derived the design from the regd owner or from the regd owners predecessor in title: s17(1)(b) Must still file application for design within 3 months of publication/use: Reg 2.01(3)
Newness A design is new unless it is identical to a design forming part of the prior art base: s16(1) Prior publication = in trade magazines, text books, dictionaries, pamphlets, patent specifications etc: ALRC Report [5.37] Design will not be disqualified b/c it is adapted from something not novel Saunders v Wiel a spoon handle depicting Westminster Abbey was novel even though anyone could go and see the Abbey Note overlap with a design which corresponds with an artistic work in which subsists: s18(2) The design is not to be taken to have been anticipated by the artistic work unless the previous use of the artistic work: Included the sale or hire of products to which the design had been applied industrially (within the meaning of s77 Copyright Act) Was with the consent of the owner of the in the artistic work See Design-Copyright overlap Distinctiveness A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base: s16(2) Cases under the old Act described this as special, noticeable, captures the eye, appeals to the eye, bold, different Standard to be applied is that of the informed user: s19(4) Factors to be considered in Substantial similarity in overall impression State of development of prior art: s19(2)(a) Give regard to features identified in any statement of newness and distinctiveness: s19(2)(b) [or if there is no statement, the appearance of the design as a whole: s19(3)] If only part is similar, have regard to the amount, quality and importance of the similar part in the context of the design as a whole: s19(2)(c) Have regard to the freedom of the creator of the design to innovate: s19(2) (d) More weight to similarities than differences: s19(1)
Only amendments that do not seek to include matter not in substance originally disclosed are allowed: s28(3) Where an amendment excludes the design, that design can be applied for again before the grant/refusal or original application and will have priority date of original application: s23(1) [divisional application] Publication Alternative to registration Does not give design protection Prevents subsequent registration of same design by third party May be able to rely on copyright protection Request must be made within 6 months of filing date: s33(1)(a), Reg 4.01 A request for regn can be changed to a request for publication but not vice versa: s38
7.3.3 Examination
Examination now occurs post-grant Any person may request (or a court may order) an examination: section 63 Infringement proceedings cannot be launched until examination has occurred: section 73(3) Registrar must determine whether a ground for revocation exists: s65 Ie if design is not registrable under s15 S51-52 that the person named in the regn is not an entitled person under s13 Excluded design under s43(1) If there is no ground for revocation, a certificate of examination is issued: s67 If grounds for revocation are found: the owner must be allowed to amend: s66(3) or if amendment will not solve the problem, the registration will be revoked: s68 (appeal to Federal Court against decision to revoke: s66(6))
Compulsory licences Can be applied for under s90 Applicant to establish that: s90(3) Design being used overseas Design not being applied to a reasonable extent in Australia Can only be applied for once the design has been examined: s90(2) At end of period of compulsory licence can apply for revocation if regd owner still not using it in Australia: s92 Use by Commonwealth or State Can be used by Cth or State like compulsory licence: s96 Must given appropriate remuneration: s98 Crown can compulsorily acquire design: s106 Crown can force assignment of design: s107
registration was obtained by fraud, false suggestion or misrep design corresponds to artistic work in which has expired can invoke s93 by way of counterclaim to infringement
7.7 Infringement
Infringement: s71 when the infringer does an act reserved for the registered owner of the design ie makes or offers to make a product which embodies a design that is identical to or substantially similar in overall impression to the registered design: s71(1)(a) sells, hires or otherwise disposes of (c), uses (d) or keeps (e) a product which embodies a design that is identical to or substantially similar in overall impression to the registered design to determine if substantially similar in overall impression see s19 factors and distinctiveness above importation of a product that embodies the design for a trade purpose is an infringement: s71(1)(b) Koninklijke Phillips Electronics NV v Remington Products Australia Ltd 3 head rotary shaver Alleged infringing product had different dimensions on head Held non-infringing May be different under new Act given more weight is given to similarities rather than differences: s19(1) Defendant in infringement proceedings may bring revocation action as counter claim: s74
Spare parts defence: s72 allows use of a product to repair a complex product must be genuine repair purposes does not cover use of the component part as original equipment or non-repair uses onus on regd owner to show that alleged infringer knew the part sold was not the purpose of genuine repair: s72(2) Exhaustion provision defence: s71(2) no infringement for parallel important of products to which regd design was applied with the licence of the regd owner Limitation period: s71(4) Within 6 years from the day on which the alleged infringement occurred
Section 77: If a person is threatened with infringement proceedings a court that has jurisdiction to determine the application for: (a) a declaration that the threats are unjustified; and (b) an injunction against the continuation of the threats; and (c) the recovery of damages sustained by the applicant as a result of the threats. Infringement threats made in relation to an unexamined design are unjustified threats: s77(3) Court may grant relief unless examination cert has been issues AND acts which the threats were made about would infringe the design: s78 Can make counterclaim for infringement against claim for unjustified threats: s79 Mere notification of the existence of a regd design is not a threat: s80
Designs Copyright Overlap Occurs where an article that can be registered as a design would otherwise be protected by copyright as an artistic work Copyright protection is removed So the design must be registered in order to receive protection It is thought that the shorter term of design protection is more appropriate Designs Copyright Overlap The possibility of dual protection: the rights of a copyright owner in a two-dimensional artistic work (eg drawings or plans) includes the right to reproduce in a 3-D form: Copyright Act s21(3) a copyright owner has a right to reproduce a 3-D artistic work in a 3-D form Designs Copyright Overlap Copyright Act ss 74-77A Where artistic works are commercially exploited as three-dimensional industrial designs, the copyright owner will be denied the ability to enforce their copyright in respect of those
products Artistic works that are commercially exploited as two-dimensional industrial designs are allowed both copyright protection and protection as a registered design ie (dual protection is allowed for flat designs) Designs Copyright Overlap Section 74 definitions "corresponding design", in relation to an artistic work, means 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 "embodied in", in relation to a product, includes woven into, impressed on or worked into the product Designs Copyright Overlap Section 77 provides that where a corresponding design has not been registered, copyright protection will only be lost if the design is applied industrially A design is applied industrially where it is applied to 50 or more articles, or dealt with in other ways Designs Copyright Overlap 2-D drawing protected by copyright artistic work 3-D representation of 2-D artistic work protected by copyright unless it is a corresponding design If it is a corresponding design it does not receive copyright protection must be registered as a design to be protected Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Copyright/Designs overlap Read pp574-594 Rickertson & Richardson: Intellectual Property Cases Materials and Commentary Fraudsters with fabrics, Weekend Australian, Jan 22-23, 2005