قانون الرسوم والنماذج الصناعية لعام 2003 (بصيغته الموحدة في 4 فبراير 2010)، أستراليا

9 Simplified outline

The following is a simplified outline of this Chapter:

This Chapter sets out matters relating to design rights.

Part 2 specifies the exclusive rights of the registered owners of a registered design.

Part 3 specifies:

(a)

who is entitled to be registered as the owner of an unregistered design; and

(b)

who is the registered owner of a registered design.

Part 4 defines the key concepts of registrable design, newness, distinctiveness and substantial similarity. These concepts are important because:

(a)

in examining a design under Chapter 5, the Registrar must decide whether it is new and distinctive when compared to the prior art base; and

(b)

in deciding whether a person has infringed a registered design under Chapter 6, a court must consider whether the allegedly infringing design is substantially similar in overall impression to the registered design.

Designs Act 2003

Design rights, ownership and registrable designs Chapter 2 Design rights Part 2

Section 10

10 Exclusive rights of registered owners

(1)

The registered owner of a registered design has the exclusive right, during the term of registration of the design:

(a)

to make or 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 or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product; and

(d)

to use such a product in any way for the purposes of any 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).

(2)

The exclusive rights mentioned in subsection (1) are personal property and are capable of assignment and of devolution by will or by operation of law.

(3)

This section is subject to this Act.

11 Assignment of interest in a design

(1)

The registered owner of a registered design may assign all or part of the registered owner’s interest in the design by writing.

(2)

An assignment under subsection (1) must be signed by, or on behalf of, the assignor and the assignee.

(3)

An assignment under subsection (1) may be for a particular place.

Note: Section 114 deals with amendments to the Register to record the assignment of an interest in a design.

Chapter 2 Design rights, ownership and registrable designs Part 2 Design rights

Section 12

12 Power of registered owner to deal with registered design

(1)

The registered owner of a registered design may, subject to any rights appearing in the Register to be vested in another person, deal with the registered owner’s interest in the design as absolute owner of it, and give good discharges for any consideration for such dealing.

(2)

However, subsection (1) does not protect a person who deals with the registered owner of a registered design otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the registered owner.

(3)

Equities in relation to a registered design may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.

Design rights, ownership and registrable designs Chapter 2 Ownership of designs Part 3

Section 13

13 Who is entitled to be registered as the registered owner of a design

(1)

A person mentioned in any of the following paragraphs is entitled to be entered on the Register as the registered owner of a design that has not yet been registered:

(a)

the person who created the design (the designer);

(b)

if the designer created the design in the course of employment, or under a contract, with another person—the other person, unless the designer and the other person have agreed to the contrary;

(c)

a person who derives title to the design from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law;

(d)

a person who would, on registration of the design, be entitled to have the exclusive rights in the design assigned to the person;

(e)

the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d).

(2)

Despite subsection (1), a person is not entitled to be entered on the Register as the registered owner of a design that has not yet been registered if:

(a)

the person has assigned all of the person’s rights in the design to another person; or

(b)

the person’s rights in the design have devolved on another person by operation of law.

(3)

To avoid doubt:

(a)

more than one person may be entitled to be entered on the Register as the registered owner of a design; and

(b)

unless the contrary intention appears, a reference to the registered owner of a registered design in this Act is a reference to each of the registered owners of the design.

Chapter 2 Design rights, ownership and registrable designs Part 3 Ownership of designs

Section 14

(4) No person other than a person mentioned in paragraph (1)(a), (b), (c), (d) or (e) is entitled to be entered on the Register as the registered owner of a design that has not yet been registered.

14 Ownership of registered designs

(1)

The registered owner of a registered design at a particular time is:

(a)

the person who, at that time, is entered in the Register as the registered owner of the design; or

(b)

if, at that time, there are 2 or more such persons—each of them.

(2)

If there are 2 or more registered owners of a registered design:

(a)

each of them is entitled to an equal, undivided share in the exclusive rights in that design; and

(b)

subject to paragraph (c), each registered owner is entitled to exercise the exclusive rights in the design to the registered owner’s own benefit without accounting to the others; and

(c)

none of them can grant a licence to exercise the exclusive rights in the design, or assign an interest in the design, without the consent of the others.

(3)

If a product that embodies a registered design is sold by any of 2 or more registered owners of the design, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the registered owners.

(4)

Subsection (2) is subject to any contrary agreement between the registered owners of a registered design.

Design rights, ownership and registrable designs Chapter 2 Registrable designs: Validity Part 4 Registrable designs Division 1

Section 15

Division 1—Registrable designs

Division 2—Substantial similarity in overall impression

20 Simplified outline

The following is a simplified outline of this Chapter:

This Chapter sets out the rules relating to design applications.

Part 2 provides that a person may file a design application in relation to one or more designs.

If the design application meets the minimum filing requirements, the design application is allocated a filing date, and each design disclosed in it obtains a priority date.

Under Chapter 4, a person who has filed a design application may, within the prescribed period, request registration or publication of all or any of the designs disclosed in the application.

Part 3 deals with amendment and withdrawal of design applications.

Part 4 deals with the lapsing of design applications.

Chapter 3 Design applications Part 2 Design applications Division 1 Applications

Section 21

Division 1—Applications

Division 2—How Registrar must deal with a design application

Division 3—Filing date and priority date

28 Amendment of design applications

(1)

The Registrar may amend a design application if requested to do so by the applicant.

(2)

A request under subsection (1) must be made in the manner prescribed by the regulations.

(3)

Despite subsection (1), the Registrar must not amend:

(a)

any representations included in the design application; or

(b)

any other documents accompanying the design application; in so far as they define a design disclosed in the design application, in such a way as to alter the scope of the application by the

inclusion of matter which was not in substance disclosed in the original design application, representations or other documents.

(4)

In this section:

amend, in relation to a representation of a design disclosed in a design application, includes the substitution of one representation for another representation.

(5)

An appeal lies to the Federal Court against a decision of the Registrar under this section.

29 Disputes between applicants

(1)

This section applies if a dispute arises between 2 or more persons in relation to whether, or in what manner, a design application should proceed.

(2)

The Registrar may, on a request made in accordance with the regulations by any of the persons, make any determinations the Registrar thinks fit for either or both of the following purposes:

(a) enabling the application to specify which of those persons is an entitled person in relation to a design disclosed in the application;

Design applications Chapter 3 Amendment or withdrawal of design applications Part 3

Section 30

(b) regulating the manner in which the application is to proceed.

(3) A person mentioned in subsection (1) or (2) must be:

(a)

the applicant; or

(b)

a person who asserts that the person is an entitled person in relation to a design disclosed in the application.

30 Persons may ask for design application to proceed in the person’s name

(1)

A person may ask the Registrar to direct that a design application specify the person as:

(a)

an applicant; or

(b)

an entitled person in relation to a design disclosed in the application.

(2)

The Registrar may give the direction if the person would, if the design were registered, be entitled under an assignment or agreement, or by operation of law, to:

(a)

the registered design or an interest in it; or

(b)

an undivided share in the registered design or in such an interest.

(3)

If the Registrar gives the direction:

(a)

the person is taken to be an applicant or an entitled person in relation to the design, as the case requires; and

(b)

the application is taken to be amended accordingly.

(4)

A request under subsection (1) must be in accordance with the regulations.

31 Publication of certain details of amended application

The Registrar must publish the details prescribed by the regulations in relation to a design application amended by the Registrar under this Part.

32 Withdrawal of designs and design applications

(1) A person who has filed a design application may withdraw the application by written notice filed within the period prescribed by the regulations.

Chapter 3 Design applications Part 3 Amendment or withdrawal of design applications

Section 32

(2)

A person who has filed a design application in respect of more than one design may withdraw one or more of those designs from the application by written notice filed within the period prescribed by the regulations.

(3)

If the design application was filed by more than one person, the notice is not effective unless each of them consented to the giving of the notice.

(4)

If a design is withdrawn from a design application, the person or persons who withdrew the design may not subsequently request registration or publication of the design under Part 2 of Chapter 4 unless the person makes another application in respect of the design under section 21.

Design applications Chapter 3 Lapsing of design applications Part 4

Section 33

33 Lapsing of design applications

(1) A design application lapses if:

(a)

a request to register or publish each design disclosed in the application has not been made, in accordance with Part 2 of Chapter 4, within the period prescribed by the regulations; or

(b)

the Registrar has given the applicant a notice under section 41 or 57 in respect of the application, and the applicant has not, within the period prescribed by the regulations:

(i)

requested that the application be amended; or

(ii)

responded in writing to the notice as mentioned in subparagraph 41(c)(ii) or 57(3)(c)(ii), as the case requires;

in such a way that the Registrar is satisfied that the application meets the applicable requirements of Chapter 4.

(2)

If the Registrar has, under section 137, extended a period within which a thing mentioned in subsection (1) is to be done, a reference in subsection (1) to a period is a reference to the extended period.

(3)

For the purposes of paragraph (1)(a), each design disclosed in the application does not include the following:

(a)

a design excluded from the application by an amendment under section 28;

(b)

a design withdrawn from the application under subsection 32(2).

(4)

The Registrar must publish a notice stating that a design application has lapsed under subsection (1). The notice must be in the form prescribed by the regulations.

Chapter 4 Registration or publication of designs Part 1 Simplified outline of Chapter 4

Section 34

34 Simplified outline

The following is a simplified outline of this Chapter:

Part 2 permits an applicant to request registration or publication of all or any of the designs disclosed in a design application.

The Registrar must register or publish the designs under Part 3 or 4 if specified requirements are satisfied.

The Registrar must refuse to register certain designs (see section 43).

Registration of a design is for a maximum of 10 years (see Division 3 of Part 3).

The registration of a design may be revoked on grounds relating to entitled persons (see Division 4 of Part 3).

Registered designs and associated documents are open for public inspection (see Part 5).

Registration or publication of designs Chapter 4 Requests for registration or publication Part 2

Section 35

35 Request for registration or publication

(1)

An applicant may request registration or publication of one or more designs disclosed in a design application.

(2)

The request must be:

(a)

included in the design application; or

(b)

made within the period prescribed by the regulations (but see sections 37 and 38).

(3)

The request must be in accordance with any requirements prescribed by the regulations.

36 Request for registration or publication—applications in respect of more than one design

(1)

If more than one design is disclosed in a design application, a request under section 35:

(a)

may be in respect of one or more of those designs; and

(b)

may be for registration of some of the designs and publication of others.

(2)

However, if an applicant makes a request in respect of only some of the designs disclosed in the design application, the following rules apply:

(a)

the applicant may not subsequently make a request for registration of the designs in respect of which no request for registration was made, unless the Registrar determines, in accordance with the regulations, that the applicant may make such a request;

(b)

the applicant may subsequently make a request for publication of the designs in respect of which no request was made.

Chapter 4 Registration or publication of designs Part 2 Requests for registration or publication

Section 37

37 Request in respect of designs excluded from an application in respect of more than one design

A design application in respect of designs excluded from an initial application must include a request for registration or publication of all the designs disclosed in the application.

38 Replacement of request for registration with request for publication

(1)

If an applicant has requested registration of a design under section 35, the applicant may replace the request for registration with a request for publication of the design by giving written notice to the Registrar.

(2)

The request is to be made within the period prescribed by the regulations.

(3)

However, an applicant may not replace a request for publication of a design with a request for registration of the design.

Registration or publication of designs Chapter 4 Registration Part 3 Formalities check Division 1

Section 39

Division 1—Formalities check

Division 2—Registration procedures

Division 3—Term of registration

Division 4—Revocation on grounds relating to entitled persons

57 Publication of a design

(1)

This section applies to a design disclosed in a design application if the applicant has requested under section 35, 36, 37 or 38 that the design be published.

(2)

The Registrar must publish the design if the Registrar is satisfied that the documents provided with the design application satisfy any requirements in relation to publication that are prescribed by the regulations.

(3)

If the Registrar is not satisfied as mentioned in subsection (2), the Registrar must give a written notice to the applicant stating:

(a)

the matters in relation to which the Registrar is not satisfied; and

(b)

that the applicant may amend the design application under section 28; and

(c)

that the application will lapse at the end of the period prescribed by the regulations for the purposes of paragraph 33(1)(b) unless, during that period:

(i)

the application is amended; or

(ii)

the applicant responds in writing to the notice stating why the applicant considers that the application does not need to be amended;

and as a result of the amendment or response, the Registrar is satisfied as mentioned in subsection (2).

58 What happens after Registrar gives notice under section 57

(1)

This section applies if the Registrar has given a written notice to an applicant under subsection 57(3).

(2)

If the applicant requests that the Registrar amend the application, the Registrar must consider the request under section 28.

(3)

If the applicant responds in writing to the notice as mentioned in subparagraph 57(3)(c)(ii), the Registrar must consider the response.

Chapter 4 Registration or publication of designs Part 4 Publication

Section 59

(4)

If, after considering the request or response, the Registrar is satisfied as mentioned in subsection 57(2), the Registrar must publish the design or designs under that subsection.

(5)

If, after considering the request or response, the Registrar is not satisfied as mentioned in subsection 57(2), the Registrar may either:

(a)

refuse to publish the design under section 59; or

(b)

give a further notice to the applicant under subsection 57(3).

59 Refusal to publish

(1)

Subject to section 58, the Registrar must refuse to publish a design if:

(a)

the design is disclosed in a design application in respect of which the Registrar has given notice under subsection 57(3); and

(b)

the applicant has not responded to the notice or amended the application in such a way that the Registrar is satisfied as mentioned in subsection 57(2).

(2)

The Registrar must notify the applicant in writing of a refusal under subsection (1). The notice must set out the reasons for the refusal.

Registration or publication of designs Chapter 4 Certain documents to be available for public inspection Part 5

Section 60

60 Design applications for registered designs and associated documents to be open for public inspection

(1)

After a design is registered or published, the Registrar must make the following documents available for public inspection:

(a)

the design application in which the design was disclosed;

(b)

any representations that were included in the design application;

(c)

any statement of newness and distinctiveness in respect of the design that was included in the application;

(d)

any document filed in relation to the design (whether before or after its registration or publication);

(e)

any document sent by the Registrar to the applicant or the registered owner in connection with the design (whether before or after its registration or publication);

(f)

any other document relating to the design application that is in, or comes into, the possession of the Designs Office;

(g)

any other document prescribed by the regulations.

(2)

Despite subsection (1), the following documents are not to be made available for public inspection:

(a)

a document that would be privileged from production in legal proceedings on the ground of legal professional privilege;

(b)

a document that is subject to an order of a court or tribunal that prohibits disclosure of the document or information in the document;

(c)

a document required to be produced under paragraph 127(1)(c), if the Registrar is satisfied that the document, or information in the document, should not be open for public inspection;

(d)

a document that contains information obtained from a document to which any of paragraph (a), (b) or (c) applies.

Chapter 4 Registration or publication of designs Part 5 Certain documents to be available for public inspection

Section 61

(3)

If a document mentioned in subsection (1) has been amended, the document before and after amendment is to be made available for public inspection.

(4)

However, if:

(a)

more than one design was disclosed in the design application; and

(b)

any of the following apply:

(i)

the application was amended to exclude one or more of the designs;

(ii)

one or more of the designs was withdrawn from the application;

(iii) one or more of the designs was neither registered nor

published; the designs that were excluded or withdrawn, or that were not registered or published, and any documents, or parts of documents, mentioned under paragraphs 60(1)(b) to (g) relating exclusively to those designs, are not to be made available for public inspection under subsection (1).

61 Certain documents not to be published

(1)

Except as otherwise provided by this Act, documents of the kind mentioned in subsection 60(1), other than documents prescribed by the regulations for the purposes of paragraph 60(1)(g):

(a)

must not be published or be open to public inspection; and

(b)

are not liable to be inspected or produced before the Registrar or in a legal proceeding unless the Registrar, court, or any person having power to order inspection or production, directs that the inspection or production be allowed.

(2)

Notice of an application for the production in legal proceedings of a document of the kind mentioned in subsection (1) must be given to the Registrar, who is entitled to be heard on the application.

(3)

Subsection (1) does not prevent documents of the kind mentioned in subsection 60(1) from being made available to an applicant for registration or publication of the design to which the documents relate.

Examination of designs Chapter 5 Simplified outline of Chapter 5 Part 1

Section 62

62 Simplified outline

The following is a simplified outline of this Chapter:

Chapter 5 deals with the examination of designs by the Registrar.

Designs may be examined after registration on the request of any person or on the Registrar’s initiative.

In examining a design, the Registrar must consider whether there are grounds for revoking the registration of the design.

Chapter 5 Examination of designs Part 2 Requests for examination

Section 63

63 Examination of design

(1)

The Registrar must examine a design that has at any time been a registered design if any person requests, or a court orders, that the Registrar examine the design.

(2)

The Registrar may, on the Registrar’s initiative and at any time, examine a design that has at any time been a registered design.

(3)

If relevant proceedings in relation to a design are pending in a court, the Registrar must not examine the design unless the court orders that the Registrar examine the design.

(4)

If:

(a)

the Registrar has started to examine a design; and

(b)

relevant proceedings in relation to the design are started; the Registrar must not continue to examine the design (including

considering a request for amendments under section 66) unless a court orders that the Registrar continue to examine the design.

(5) For the purposes of this section, the expression a design that has at any time been a registered design:

(a)

does not include a design whose registration has ceased because of the operation of subsection 48(1); and

(b)

does not include a design whose registration has been revoked, unless a declaration of the entitled persons has been made under section 52, 53 or 54 in relation to the design.

64 Requirements for request for examination of design

(1)

A request by a person that the Registrar examine a registered design must satisfy any requirements prescribed by the regulations.

(2)

The request may contain material in relation to the newness and distinctiveness of the design.

Examination of designs Chapter 5 Requests for examination Part 2

Section 64

(3) The Registrar must make available for public inspection material contained in a request under this section in relation to the newness and distinctiveness of the design to which the request relates.

Chapter 5 Examination of designs Part 3 Examination

Section 65

65 What Registrar must do in examining a design

(1)

If the Registrar receives a request to examine a registered design, or decides to examine a registered design, the Registrar must consider whether a ground for revocation under subsection (2) exists.

(2)

The following are grounds for revocation of the registration of a design for the purposes of this Part:

(a)

the design is not a registrable design;

(b)

any other ground prescribed by the regulations.

(3)

The examination must be:

(a)

conducted in accordance with the procedures prescribed by the regulations; and

(b)

completed within the period prescribed by the regulations.

66 Amendment of registration

(1)

This section applies if the Registrar is satisfied, in the course of examining a registered design, that a ground for revocation of the registration of the design has been made out.

(2)

The Registrar must give written notice to that effect to the registered owner of the design.

(3)

The registered owner of the design may request that the Registrar amend the Register in such a way that the ground for revocation is removed.

(4)

A request under subsection (3) must be made in the manner prescribed by the regulations.

(5)

The Registrar must consider and deal with the request in the manner prescribed by the regulations.

(6)

An amendment must not be such as to:

(a) increase the scope of the design registration; or

Examination of designs Chapter 5 Examination Part 3

Section 67

(b) alter the scope of the registration by the inclusion of matter that was not in substance disclosed in the original design application, representations or other documents.

67 Certificate of examination where registration valid

(1)

This section applies in relation to a registered design if:

(a)

the Registrar has examined the design and is satisfied that a ground for revocation of the registration of the design has not been made out, or that any such ground would be removed if the Register were amended as proposed in a request made under section 66; and

(b)

the registration of the design has not ceased under subsection 48(1).

(2)

The Registrar must give the relevant parties a notice stating:

(a)

that the design has been examined; and

(b)

if the Registrar is satisfied that a ground of revocation could be removed if the Register were amended as proposed in a request made under section 66—the details of the proposed amendments; and

(c)

that a certificate of examination is to be issued.

(3)

If the Registrar remains satisfied as mentioned in paragraph (1)(a) after giving the relevant parties a reasonable opportunity to be heard, the Registrar must:

(a)

issue a certificate of examination, in the form prescribed by the regulations, to the registered owner of the design; and

(b)

record on the Register the issue of that certificate and, if applicable, such amendments proposed in a request made under section 66 that the Registrar is satisfied would remove a ground of revocation; and

(c)

publish a notice, in the form prescribed by the regulations, stating:

(i)

that an examination of the design has been completed; and

(ii)

that infringement proceedings under Chapter 6 may be commenced.

(4)

An appeal lies to the Federal Court against a decision of the Registrar under this section.

Chapter 5 Examination of designs Part 3 Examination

Section 68

68 Revocation of registration after examination

(1)

This section applies in relation to a registered design if:

(a)

the Registrar has examined the design, and is satisfied that a ground for revocation of the registration of the design has been made out and the ground would not be removed if the Register were amended as proposed in a request under section 66; and

(b)

the registration of the design has not ceased under subsection 48(1).

(2)

The Registrar must:

(a)

give the relevant parties a notice stating that the registration of the design is revoked; and

(b)

make an entry in the Register under section 115.

(3)

The Registrar must also publish a notice, in the form prescribed by the regulations, stating that the registration of the design has been revoked and that the design is taken never to have been registered.

(4)

The Registrar must not revoke the registration of a design under this section unless:

(a)

the Registrar has given the registered owner a reasonable opportunity to be heard; and

(b)

if appropriate, the Registrar has given the registered owner a reasonable opportunity to amend the relevant registered design for the purpose of removing a ground for the revocation of the registration of the design and the registered owner has failed to do so.

(5)

The Registrar must not revoke the registration of a design under this section while relevant proceedings in relation to that design are pending.

(6)

An appeal lies to the Federal Court against a decision of the Registrar under this section.

Examination of designs Chapter 5 Material may be provided to Registrar Part 4

Section 69

69 Certain material may be provided to Registrar

(1)

A person may provide to the Registrar material relating to whether a registered design is new or distinctive within the meaning of Division 1 of Part 4 of Chapter 2. The material may be provided even if the person has not made a request under subsection 63(1) that the design be examined.

(2)

The material is to be provided in accordance with the regulations.

(3)

If a person provides material to the Registrar under subsection (1), the Registrar must:

(a)

inform the registered owner of the design that the material has been provided; and

(b)

provide a copy of the material to the registered owner of the design; and

(c)

retain the material throughout the period prescribed by the regulations.

(4)

Nothing in this section is to be taken to require the Registrar to examine a design under Part 3.

(5)

The Registrar must make a copy of material provided to the Registrar under subsection (1) available for public inspection.

Chapter 6 Infringement Part 1 Simplified outline of Chapter 6

Section 70

70 Simplified outline

The following is a simplified outline of this Chapter:

Chapter 6 is about infringement.

Part 2 provides that a person infringes a registered design if, without the appropriate authority, the person deals in certain ways with a product that embodies the design, or a design that is substantially similar to it.

Part 2 also provides that the registered owner of a design may bring infringement proceedings. The defendant may counter-claim for rectification of the Register.

Various remedies are available, including injunction, damages or an account of profits.

Part 3 deals with unjustified threats of infringement proceedings.

Infringement Chapter 6 Infringement of registered design Part 2

Section 71

71 Infringement of design

(1)

A person infringes a registered design if, during the term of registration of the design, and without the licence or authority of the registered 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 such a product into Australia for sale, or for use for the 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).

(2)

Despite subsection (1), a person does not infringe a registered design if:

(a)

the person imports 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; and

(b)

the product embodies the design with the licence or authority of the registered owner of the design.

(3)

In determining whether an allegedly infringing design is substantially similar in overall impression to the registered design, a court is to consider the factors specified in section 19.

(4)

Infringement proceedings must be started within 6 years from the day on which the alleged infringement occurred.

Chapter 6 Infringement Part 2 Infringement of registered design

Section 72

72 Certain repairs do not infringe registered design

(1)

Despite subsection 71(1), a person does not infringe a registered design if:

(a)

the person uses, or authorises another person to use, a product:

(i)

in relation to which the design is registered; and

(ii)

which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; and

(b)

the product is a component part of a complex product; and

(c)

the use or authorisation is for the purpose of the repair of the complex product so as to restore its overall appearance in whole or part.

(2)

If:

(a)

a person uses or authorises another person to use a product:

(i)

in relation to which a design is registered; and

(ii)

which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; and

(b)

the person asserts in infringement proceedings that, because of the operation of subsection (1), the use or authorisation did not infringe the registered design;

the registered owner of the design bears the burden of proving that the person knew, or ought reasonably to have known, that the use or authorisation was not for the purpose mentioned in paragraph (1)(c).

(3) For the purposes of subsection (1):

(a)

a repair is taken to be so as to restore the overall appearance of a complex product in whole if the overall appearance of the complex product immediately after the repair is not materially different from its original overall appearance; and

(b)

a repair is taken to be so as to restore the overall appearance of a complex product in part if any material difference between:

(i)

the original overall appearance of the complex product; and

(ii)

the overall appearance of the complex product immediately after the repair;

Infringement Chapter 6 Infringement of registered design Part 2

Section 73

is solely attributable to the fact that only part of the complex product has been repaired.

(4)

In applying subsection (3), a court must apply the standard of the informed user.

(5)

In this section:

repair, in relation to a complex product, includes the following:

(a)

restoring a decayed or damaged component part of the complex product to a good or sound condition;

(b)

replacing a decayed or damaged component part of the complex product with a component part in good or sound condition;

(c)

necessarily replacing incidental items when restoring or replacing a decayed or damaged component part of the complex product;

(d)

carrying out maintenance on the complex product.

standard of the informed user, in relation to the overall appearance of a complex product, means the standard of a person who is familiar with the complex product, or with products similar to that product.

use, in relation to a product, means:

(a)

to make or offer to make the product; or

(b)

to import the product into Australia for sale, or for use for the purposes of any trade or business; or

(c)

to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, the product; or

(d)

to use the product in any other way for the purposes of any trade or business; or

(e)

to keep the product for the purpose of doing any of the things mentioned in paragraph (c) or (d).

73 Infringement proceedings

(1) The registered owner of a registered design may bring proceedings against another person alleging that the person has infringed the registered design.

Chapter 6 Infringement Part 2 Infringement of registered design

Section 74

(2)

Infringement proceedings may be brought in a prescribed court or in another court that has jurisdiction in relation to the proceedings.

(3)

However, infringement proceedings may not be brought under subsection (1) until:

(a)

the design has been examined under Chapter 5; and

(b)

a certificate of examination has been issued.

(4)

If a person files an application under section 21 for registration of a design as a result of the operation of section 55, the person may only bring infringement proceedings in respect of infringements of the design occurring after the date on which the application was filed under section 21.

74 Counter-claims

A defendant in infringement proceedings in respect of a registered design may apply, by way of counter-claim in the proceedings, for the revocation of the registration of the design under section 93.

75 Remedies for infringement

(1)

Without limiting the relief that a court may grant in infringement proceedings, the relief may include:

(a)

an injunction subject to such terms as the court thinks fit; and

(b)

at the option of the plaintiff—damages or an account of profits.

(2)

The court may refuse to award damages, reduce the damages that would otherwise be awarded, or refuse to make an order for an account of profits, if the defendant satisfies the court:

(a)

in the case of primary infringement:

(i)

that at the time of the infringement, the defendant was not aware that the design was registered; and

(ii)

that before that time, the defendant had taken all reasonable steps to ascertain whether the design was registered; or

(b)

in the case of secondary infringement—that at the time of the infringement, the defendant was not aware, and could not reasonably have been expected to be aware, that the design was registered.

Infringement Chapter 6 Infringement of registered design Part 2

Section 76

(3)

The court may award such additional damages as it considers appropriate, having regard to the flagrancy of the infringement and all other relevant matters.

(4)

It is prima facie evidence that the defendant was aware that the design was registered if the product embodying the registered design to which the infringement proceedings relate, or the packaging of the product, is marked so as to indicate registration of the design.

(5)

In this section:

primary infringement means infringement of a kind mentioned in paragraph 71(1)(a).

secondary infringement means infringement of a kind mentioned in paragraph 71(1)(b), (c), (d) or (e).

76 Intervention by Registrar

A court may grant the Registrar leave to intervene in infringement proceedings.

Chapter 6 Infringement Part 3 Relief from unjustified threats

Section 77

77 Application for relief from unjustified threats

(1)

If a person is threatened by another person (the respondent) with infringement proceedings, or other similar proceedings, in respect of a design, an aggrieved person (the applicant) may apply to a prescribed court, or to another court that has jurisdiction to hear and 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.

(2)

A threat mentioned in subsection (1) may be by means of circulars, advertisements or otherwise.

(3)

If a certificate of examination has not been issued in respect of a design, a threat to bring infringement proceedings, or other similar proceedings, in respect of the design is an unjustified threat for the purposes of this section.

78 Court’s power to grant relief

A court may grant the relief sought by an applicant under section 77, unless the respondent satisfies the court that:

(a)

the design concerned is registered, has been examined and a certificate of examination has been issued; and

(b)

the acts about which the threats were made infringe, or would infringe, the registered design.

79 Counter-claim

(1)

The respondent in proceedings under section 77 in respect of a design may apply, by way of counter-claim, for relief to which the respondent would be entitled in separate infringement proceedings against the applicant in respect of the design.

(2)

If the respondent applies under subsection (1) by way of counter-claim, the applicant may, without making a separate

Infringement Chapter 6 Relief from unjustified threats Part 3

Section 80

application under section 93, apply for revocation of the registration of the design.

(3)

The provisions of this Act relating to infringement proceedings apply, with the necessary modifications, to a counter-claim under subsection (1).

(4)

The provisions of this Act relating to proceedings for the revocation of the registration of a design apply, with the necessary modifications, to an application under subsection (2).

80 Mere notification of registration not a threat

The mere notification of the existence of a registered design does not constitute a threat of infringement proceedings for the purposes of section 77.

81 Legal practitioners, registered patent attorneys and registered trade marks attorneys

A legal practitioner, a registered patent attorney or a registered trade marks attorney is not liable to proceedings under section 77 in respect of an act done in a professional capacity on behalf of a client.

Chapter 7 Jurisdiction and powers of courts Part 1 Simplified outline of Chapter 7

Section 82

105 Supply of products by the Commonwealth to foreign countries

(1)

This section applies if:

(a)

the Commonwealth has made an agreement with a foreign country to supply to the country a product in relation to which a design is registered, which embodies the design; and

(b)

the product is required for the defence of the country.

(2)

The use of the product by the Commonwealth, or by a person authorised in writing by the Commonwealth, for the purposes of supplying the product is taken, for the purposes of this Part, to be a use of the product by the Commonwealth for the services of the Commonwealth.

(3)

The Commonwealth or the authorised person may:

(a)

sell the product to the country under the agreement; and

(b)

sell to any person any of the products that are not required for the purpose for which they were made.

Chapter 8 The Crown Part 3 Acquisition by and assignments to the Crown

Section 106

106 Acquisition of design by the Commonwealth

(1)

The Governor-General may direct that a design disclosed in a design application, or a registered design, be acquired by the Commonwealth.

(2)

When a direction is given, all rights in respect of the design are, by force of this section, transferred to and vested in the Commonwealth.

(3)

Notice of the acquisition must be published in the prescribed manner and given to the following:

(a)

in the case of a design that has not yet been registered—each applicant for registration of the design and each entitled person in relation to the design;

(b)

in the case of a registered design—the registered owner.

(4)

The Commonwealth must pay:

(a)

each entitled person in relation to the design or the registered owner of the design, as the case requires; and

(b)

all other persons appearing in the Register as having an

interest in the design; such compensation as is agreed between the Commonwealth and those persons or, in the absence of agreement, as is determined by a prescribed court.

(5) A person may not apply to a prescribed court for a determination under subsection (4) in relation to a design unless a certificate of examination has been issued in relation to the design.

107 Assignment of design to the Commonwealth

(1) An entitled person in relation to a design or the registered owner of a design may assign to the Commonwealth the person’s interest in the design and in the exclusive rights obtained, or to be obtained, in the design.

The Crown Chapter 8 Acquisition by and assignments to the Crown Part 3

Section 107

(2) The assignment and all covenants and agreements contained in the assignment are:

(a)

valid and effectual even if valuable consideration has not been given; and

(b)

may be enforced by action or other appropriate proceeding in the name of the Minister.

Chapter 8 The Crown Part 4 Prohibition orders

Section 108

108 Prohibition of publication of information about designs

(1)

The Registrar may, if it appears to the Registrar to be necessary or expedient to do so in the interests of the defence of the Commonwealth, by written order, prohibit or restrict the publication of information about the subject matter of a design application.

(2)

The Registrar is subject to any directions by the Minister in making an order under subsection (1).

(3)

If an order is in force under subsection (1) in relation to an application, the application may be dealt with under this Act, but a design disclosed in the application must not be registered or published.

(4)

If:

(a)

an order under subsection (1) has been revoked; and

(b)

at the date of the revocation of the order, the design would, but for the operation of subsection (3), have been registered or published;

the design must be registered or published within the prescribed period.

(5) Nothing in this Act prevents disclosing information about a design to an Agency or Commonwealth authority for the purpose of obtaining advice as to whether an order under this section should be made, amended or revoked.

109 Publication of information about designs

(1) A person commits an offence if:

(a)

the person is subject to an order under subsection 108(1); and

(b)

the person engages in conduct; and

(c)

the person’s conduct contravenes the order.

Maximum penalty: Imprisonment for 2 years.

The Crown Chapter 8 Prohibition orders Part 4

Section 109

(2) Subsection (1) does not apply if the person has the Registrar’s written consent.

Note: A defendant bears an evidentiary burden in relation to the matter in subsection (2) (see subsection 13.3(3) of the Criminal Code).

(3) In this section, engage in conduct means:

(a)

to do an act; or

(b)

omit to do an act.

Chapter 9 The Register

Section 110

137 Extensions of time

(1)

The Registrar must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:

(a)

the Registrar or a Deputy Registrar; or

(b)

a person employed in the Designs Office; or

(c)

a person providing, or proposing to provide, services for the benefit of the Designs Office.

(2)

The Registrar may, on application by a person concerned in accordance with the regulations, extend the time for doing a relevant act if, because of:

(a)

an error or omission by the person, or by the person’s agent; or

(b)

circumstances beyond the control of the person;

the relevant act that is required to be done within a certain time is not, or cannot be, done within that time.

(3)

The time for doing a relevant act may be extended, whether before or after that time has expired.

(4)

The Registrar must advertise an application for an extension of time of more than 3 months in the manner prescribed by the regulations.

(5)

Subject to subsection (6), a person may, as prescribed, oppose the granting of the application.

(6)

If the Registrar is satisfied that an application under subsection (2) would not be granted, even in the absence of opposition under subsection (5):

(a)

the Registrar need not advertise the application in accordance with subsection (4); and

(b)

the application cannot be opposed; and

(c)

the Registrar must refuse the application.

Chapter 11 Miscellaneous Part 5 Extensions of time

Section 138

(7) In this section:

relevant act means an action (other than a prescribed action) in relation to:

(a)

a registered design; or

(b)

an application for registration or publication of a design; or

(c)

any proceedings under this Act (other than court proceedings).

138 Consequences of extension

(1) If:

(a)

a design application lapses, or the registration of a design ceases to be in force because of a failure to do a relevant act (within the meaning of section 137); and

(b)

the time for doing the act is extended;

the application or registration must be treated as having been restored on the day on which the extension is granted.

(2) If an application or registration is restored under subsection (1), the Registrar must:

(a)

advise the applicant or registered owner that the application or registration has been restored; and

(b)

publish a notice in the manner prescribed by the regulations that the application or registration has been restored.

139 Protection of third parties

(1)

This section applies if the registration of a design ceases to be in force because of a failure to do a relevant act (within the meaning of section 137) and is subsequently restored under section 138.

(2)

A person who took definite steps to use the design commercially after the registration of the design ceased to be in force but before the registration is restored may:

(a)

continue to use the design after the registration is restored; or

(b)

sell the right to use the design to another person.

(3)

However, the person must not grant a licence to another person to use the design.

Miscellaneous Chapter 11 Extensions of time Part 5

Section 140

(4)

A person who purchases a right under paragraph (2)(b) must not sell to another person the right to use the design or grant a licence to another person to use the design.

(5)

A person who continues to use a design because of paragraph (2)(a) or used the design after purchasing it as mentioned in subsection (4) does not infringe the registered design.

140 Infringement proceedings

Infringement proceedings cannot be brought in respect of an infringement committed:

(a)

between the day on which the registration of the design ceases to be in force and the day on which it is restored; or

(b)

between the day on which the design application lapses and the day on which it is restored.

Chapter 11 Miscellaneous Part 6 Other

Section 141

Part 6—Other

141 Powers of agents

An agent may do any act in connection with the registration of designs, on behalf of any other person.

142 Right of lien of registered patent attorney and registered trade marks attorney

The regulations may provide that a registered patent attorney or a registered trade marks attorney has, in relation to documents and property of a client in a matter relating to designs, the same right of lien that a solicitor has in relation to the documents and property of a client.

143 Revocation of registration does not affect court decisions and things done under contracts before revocation

The revocation of the registration of a design does not affect the operation of a court decision made before the revocation, or things done under a contract before the revocation.

144 Filing of documents

A document may be filed:

(a)

by any means determined by the Registrar; or

(b)

by delivering the document to a sub-office of the Designs Office either personally or by post or by any other prescribed means.

145 Service of documents

Where this Act provides for a document to be served on, or given or sent to, a person and the person has given the Registrar an address in Australia for service of documents, the document may be served on, or given or sent to, the person by post to that address.

Miscellaneous Chapter 11 Other Part 6

Section 146

146 Death of applicant before application determined

If an applicant for registration or publication of a design dies before the application is determined, the person’s legal representative may proceed with the application.

147 Death of person after design registered

(1)

This section applies if, at any time after a design is registered, the Registrar is satisfied that the registered owner had died (or, in the case of a body corporate, had ceased to exist) before the design was registered.

(2)

The Registrar may amend the Register by substituting for the name of the registered owner the name of the person who should have been entered in the Register as the registered owner.

(3)

An amendment by the Registrar under this section has effect, and is to be taken always to have had effect, accordingly.

148 Exercise of discretionary power by Registrar

The Registrar must not exercise a discretionary power under this Act adversely to a person without giving that person an opportunity to be heard.

149 Regulations

(1)

The Governor-General may make regulations prescribing matters:

(a)

required or permitted to be prescribed; and

(b)

necessary or convenient to be prescribed for carrying out or giving effect to this Act; and

(c)

necessary or convenient for the conduct of any business relating to the Designs Office.

(2)

Without limiting subsection (1), that subsection includes the power to make regulations:

(a)

requiring persons to give statutory declarations in relation to applications under the Act or regulations, or in relation to proceedings under the Act (other than court proceedings); and

(b)

making provision for and in relation to the making of a declaration, or the doing of an act, under this Act on behalf of

Chapter 11 Miscellaneous Part 6 Other

Section 149

a person who, because of infancy or physical or mental disability, is unable to make the declaration or do the act; and

(c)

providing for the refund, in the whole or part of a fee paid under the Act; and

(d)

providing for the waiver, in whole or part, of a fee that would otherwise be payable under the Act; and

(e)

making provision for and in relation to the amendment of an entry in the Register to correct a clerical error or an obvious mistake, or for any other purpose; and

(f)

empowering the Registrar to require a person to inform the Registrar, within the period prescribed by the regulations, whether or not the person wishes to be heard for the purposes of a provision of the Act; and

(g)

empowering the Registrar to require a person who wishes to be heard for the purposes of a provision of the Act to appear on a day, and at a place and time, specified by the Registrar; and

(h)

providing for the contents of design applications in which one or more designs are disclosed, including, but not limited to, requirements as to common ownership of the designs; and

(i)

empowering the Registrar to direct an applicant for registration or publication of a design to do such things as are necessary to ensure that the application is in accordance with the requirements of the regulations for filing and:

(i)

providing for the lapsing of the application if such a direction is not complied with within the period specified in the regulations; and

(ii)

providing for the restoration of an application that has so lapsed; and

(j)

providing for appeals against decisions of the Registrar made under the regulations; and

(k)

making provision for and in relation to the practice and procedure of prescribed courts in proceedings under this Act, including provision prescribing the time within which any proceeding may be started or anything else may be done, and providing for the extension of any such time; and

(l)

making transitional or consequential provisions as necessary or convenient because of the repeal of the Designs Act 1906 and the enactment of this Act; and

Miscellaneous Chapter 11 Other Part 6

Section 149

(m)

provide for regulations under the Designs Act 1906 to continue to have effect (with any prescribed alterations) for specified purposes of this Act; and

(n)

providing for things to be done for the purposes of this Act or the regulations by means of electronic equipment or communication; and

(o)

empowering the Registrar to prepare, publish and sell such documents relating to designs as the Registrar thinks fit; and

(p)

making provision for and in relation to the destruction of documents.

(3) Despite the repeal of the Designs Act 1906 by this Act, regulations made under paragraph (2)(l) may provide for the continued operation of specified provisions of the Designs Act 1906 in relation to prescribed persons or matters, or in prescribed circumstances.

Chapter 12 Repeal, transitional and saving provisions Part 1 Repeal of Designs Act 1906

Section 150

Chapter 12—Repeal, transitional and saving provisions

Part 1—Repeal of Designs Act 1906

150 Repeal

The Designs Act 1906 is repealed.

Repeal, transitional and saving provisions Chapter 12 Transitional and saving provisions Part 2

Section 151

Part 2—Transitional and saving provisions

151 Application of this Act to certain designs

(1)

This section applies to the following designs:

(a)

a design registered under the old Act immediately before the commencing day;

(b)

a design registered after the commencing day as a result of a design application to which the old Act continued to apply because of section 153.

(2)

The design:

(a)

is taken to be registered under this Act:

(i)

in the case of a design mentioned in paragraph (1)(a)— on and from the commencing day; and

(ii)

in the case of a design mentioned in paragraph (1)(b)— on and from the day on which the design was registered; and

(b)

is taken to have been examined by the Registrar under Part 3 of Chapter 5 and a certificate of examination is taken to have been issued under section 67.

(3)

However, despite subsection (2):

(a)

the old Act continues to apply for the purposes of determining the validity of the registration of the design; and

(b)

this Act does not apply for the purposes of determining the validity of the registration of the design; and

(c)

the design must not be examined under Chapter 5.

152 Term of registration of certain designs

Despite section 151:

(a)

the term of registration of a design to which that section applies ceases to be in force on the day on which it would have ceased to be in force under the old Act if the old Act had not been repealed; and

(b)

section 27A of the old Act continues to apply to the design as if the old Act had not been repealed.

Chapter 12 Repeal, transitional and saving provisions Part 2 Transitional and saving provisions

Section 153

153 Applications made before commencing day

(1)

The old Act continues to apply to an application made under the old Act before the commencing day as if the old Act had not been repealed, unless a conversion request is made under section 159 in respect of the application.

(2)

However, an application for an extension of time in relation to an application mentioned in subsection (1) must be made under section 137 of this Act.

(3)

If, after dealing with an application under the old Act, the Registrar is required to register the design to which the application relates, the Registrar must comply with section 45 of this Act in relation to the registration of the design.

154 Other applications and proceedings

(1)

This Act applies, on and after the commencing day, to any application, request, action or proceeding made or started under the old Act and not finally dealt with under that Act before that day as if the application, request, action or proceeding had been made or started under a corresponding provision of this Act.

(2)

Subsection (1) does not apply to:

(a)

an application to which the old Act continues to apply under section 153; or

(b)

a proceeding to which the old Act continues to apply under section 155.

Note: Section 152 deals with the application of section 27A of the old Act.

155 Pending proceedings

(1)

If proceedings arising from an application to a court under the old Act were pending immediately before the commencing day, the matter is to be decided as if the old Act had not been repealed.

(2)

However, any order made by a court in relation to rectification must relate to the Register under this Act.

156 Infringement under old Act

(1) This section applies to the following designs:

Repeal, transitional and saving provisions Chapter 12 Transitional and saving provisions Part 2

Section 157

(a)

a design that was at any time registered under the old Act and had not been expunged from the Register under the old Act (whether or not the design is a design to which section 151 applies); and

(b)

a design that was registered after the commencing day as a result of an application to which the old Act applied because of section 153.

(2) If:

(a)

either of the following applies:

(i)

a person engages, before the commencing day, in conduct that infringed the monopoly in the design under the old Act;

(ii)

a person engages, after the commencing day, in conduct that would have infringed the monopoly in the design under the old Act if that Act were still in force; and

(b)

an action relating to that infringement was not pending

immediately before the commencing day; an action may be brought under this Act for infringement of the design.

(3)

However, in an action under subsection (2):

(a)

the old Act continues to apply for the purposes of determining whether the person’s conduct infringed the monopoly in the design; and

(b)

this Act does not apply for the purposes of determining whether the person’s conduct infringed the monopoly in the design; and

(c)

a person is not entitled to any injunction or other relief to which the person would not have been entitled under the old Act.

(4)

Subsection (2) is subject to any law with respect to the time period within which an action of a kind mentioned in that subsection may be started.