2 History of the Law and Design

Origin of Design Protection

Despite modern design protection being described as the stepchild of patent and copyright,^[1] design rights are one of the oldest forms of intellectual property rights. Like all forms of intellectual property protection, Australia’s registered design system has its origins in English sources.

The United Kingdom introduced a patent system with the Statute of Monopolies of King James in 1642,^[2] and copyright protection for printed books with the Statute of Anne in 1710,^[3] which extended to engravings in 1735.^[4] The origins of protecting design stretch back to the 18^th century. The motivations to protect designs were the same back then as they are now. The Industrial Revolution saw changes to the textile industry that drove mass production. Technological advancement saw the introduction of automatic spinning and weaving machinery, resulting in the ability to produce and reproduce printed fabrics cheaply.^[5] The programmable Jacquard loom permitted more styles and quicker production. More fashionable patterns were exported from Lyon, France, into the UK. The British could not keep up with the increasingly imported patterns resulting from free trade and lowered tariffs.

To protect the investment in and incentivise design production during the Industrial Revolution, English lawmakers in 1787 introduced the Act for the Encouragement of the Arts of Designing and Printing Linens, Cottons, Calicos and Muslins by vesting the Properties thereof in the Designers, Printers and Proprietors for a Limited Time 1787 (UK).^[6] This was the first statute to address the issue of copyright in industrial designs. Lawmakers modelled the protection afforded to authors under the Statute of Anne. Protection was, therefore, routinely referred to as the ‘copyright’ in designs.^[7] The purpose of the statute was to provide exclusive rights to ‘every person who shall invent, design and print … any new and original pattern… for printing linens, cottons, calicos or muslins’.^[8] Protection lasted for two months from the first publication of the pattern.

Although the motivations were the same, it took some time for the law to start to protect designs of differing materials. Although the initial statute was intended to be temporary, it was renewed in 1789,^[9] and extended protection to three months. The statute became permanent with the introduction of The Linens, etc. Act 1794 (UK).^[10] After studying the French protection for designs, the English introduced a registration system in 1839.^[11] It aimed to protect more sophisticated designs, for example, providing exclusive rights to textiles and fabrics comprised of wool, silk and combinations of materials.

This history of protecting designs in the UK demonstrates the emergence of modern intellectual property protection.^[12] The development of designs law during the early 19^th century saw the emergence of features not only seen in modern design protection regimes but also in intellectual property protection more generally.^[13] Early statutes introduced the first registers of intellectual property – the first modern system of registration by bureaucratic means. In addition, it saw a movement away from subject-specific or industry-specific protection of intangible assets (like linens) and a process of abstraction to categorise creations of the mind.^[14] This allowed for the eventual creation of boundaries — that is, how intellectual property was defined and organised. The development of a registered design system recognised that the basis of protecting designs did not fit neatly within copyright.

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Explore the timeline below that sets out the significant milestones of the law protecting design, reaching back to French and English origins to modern Australian law.

Sources of Law

The features of Australia’s modern design registration system are found in these early versions of British statutes. Initially, Australia’s colonies inherited British law. Over time, however, each colony became less reliant on British law and eventually passed whatever laws they wished, including those for intellectual property protection.^[15] Registered designs were protected according to colonial acts that were, in turn, based upon the various United Kingdom statutes. Each colony of Australia had its own design register.

The Victorian colony registered the first design for a ‘centre flower’ design.^[16] The application was made on April 4, 1870, and the design was registered under class 2 for an article of manufacture composed wholly or chiefly of wood, stone, cement or plaster. The flower design shown below was likely a wall ornament.

Applications then followed in the other colonies. Between 1870 and 1905, just over four thousand applications were filed across Australia. The most popular articles subject to colonial design registration were for ornamental railings. The first applications in each colony included:

• In New South Wales, a design for an advertising board was filed on July 25, 1879.^[17]
• In South Australia, a design for an iron railing and gate was filed on March 4, 1880.^[18]
• In Queensland, a design for a sanitary pad was filed on April 17, 1885.^[19]
• In Western Australia, a design for a tea canister was filed on May 21, 1891.^[20]
• In Tasmania, a design for a spoon was filed on June 18, 1894.^[21]

After federation, the Commonwealth Parliament gained the power to legislate with respect to designs under s 51(xviii) of the Constitution. This led to the enactment of the Designs Act 1906 (Cth). Under the Act, a design was defined as ‘an industrial design applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes’.^[22] Rights conferred by registration was described as ‘copyright in the design’, which was ‘the exclusive right to apply the design, or to authorise another person to apply the design, to the articles in respect of which it is registered’.^[23] Use of the term copyright was misleading as the exclusive rights to the design were more akin to a patent rather than a copyright. Clarification of the nature of the design right to exclude a reference to copyright was only removed in an amendment in 1981.^[24]

A Registrar of Designs and Designs Offices were established in each state to examine applications and register designs that would last five years.^[25] Only those designs that were assessed as ‘[a]ny new and original design’, not previously published in Australia, could be registered ‘in respect of all or any of the articles’ included in one or more classification classes.^[26] This section was amended in 1934 to reflect the UK designs statute and defined that a design must be ‘new or original’ in order to be registered. A design was infringed if a person, without the owner’s licence or authority, applied the design or any fraudulent or obvious imitation of it to any article in respect of which the design was registered or sold, offered or kept for sale, any article to which the design or any fraudulent or obvious imitation of it had been applied in infringement of the copyright in the design.^[27] The subsequent history of United Kingdom designs law was less relevant to Australia and went in other directions.^[28]

For nearly a century, Australian designs were registered under the Designs Act 1906 (Cth) before it was replaced with the Designs Act 2003 (Cth). The current system for protecting designs under this statute will be covered in more detail throughout this textbook. Alongside the Act, the Design Regulations 2004 (Cth) are a set of regulations created to carry out the intent of the Design Act 2003 (Cth). The regulations cover a wide range of topics related to the registration and protection of designs, including the application process for registration, the duration and renewal of design registrations, and the rights and remedies available to design owners. The Design Regulations 2004 (Cth) aims to ensure that the Design Act 2003 (Cth) is implemented consistently and effectively.

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Explore the Act with the interactive below.

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Explore the Regulations with the interactive below.

In addition, the Act permits the Registrar to make determinations and create instruments relating to design protection.^[29] This allows for the Registrar to determine:

• How applicants file a document with the Designs office
• Sets the format for filing documents
• How evidence in a matter should be filed with IP Australia
• Set formal requirements for design representations
• How an applicant pays fees.

Below are links to the current non-legislative instruments:

• Designs (approved means for paying a fee) determination 2019 [PDF]
• Designs (Documents and Evidence) (Proceedings) Instrument 2019 [PDF]
• Designs (Formal requirements for Designs Documents) Instrument 2022 [PDF]
• Designs (means and form of filing documents) instrument 2022 [PDF]

Other pieces of law that affected protection included that under copyright legislation. Sections 74-77 of the Copyright Act 1968 (Cth) govern the overlap of copyright and designs. This overlap and others under trade marks and patents will be discussed in more detail in Chapter 9.

Legislative History

Although it was in operation for nearly a century, growing dissatisfaction with the 1906 Act led to its repeal in 2003. Despite little legislative change during that period, design law has occupied considerable time and resources of government officials, committees and policymakers through reviews, consultation papers and reports. Below is a short legislative history since the introduction of the 1906 Act.

During its time in force, the 1906 Act was amended 14 times between 1906 and 2003. For example, in 1912, the Act was amended to extend the maximum term of protection to 15 years, and as described above, in 1934, a registrable design must be ‘new or original’. Explore the various amending pieces of legislation below.

During this period, several reviews of Australia’s design registration system occurred. In 1970, the Designs Law Review Committee (Franki Committee) was appointed to review the Designs Act 1906 (Cth).^[30] The Franki Committee reviewed not only industry needs and the 1906 legislative framework but also turned its attention to the law in the UK. The final report was handed down in 1973 and consequentially led to the Designs Amendment Act 1981 (Cth).

Following the recommendation of the Committee, the definition of ‘design’ was amended and became ‘features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction’.^[31] The change closely followed the 1949 UK Act. However, it omitted ‘appeal to’ the eye from the UK definition so as not to import an aesthetic requirement.^[32] A new section was added which provided ‘[a]n application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose’.^[33] The requirements for registrable designs became designs that are ‘new or original’ if the same design — or a design which differed from it in only immaterial details or an obvious adaptation—had been registered, published or used.^[34]

Despite the review and introduction of the amending legislation, difficulties and dissatisfaction continued. In 1989, the Copyright Amendment Act amended ss 74, 75 and 77 of the Copyright Act 1968 (Cth),^[35] which excluded protection for functional three-dimensional designs and left partial cumulation of protection for two-dimensional designs, buildings and works of artistic craftsmanship. As a result of the Senate debate on the corresponding Bill, an inquiry was established. The Committee Inquiring into Intellectual Property Protection for Industrial Designs (known as the Lahore Inquiry) was appointed by the then Minister for Industry, Technology and Commerce to consider the copyright/designs overlap and the design registration system more broadly.^[36]

Despite the changes made in 1981 to the 1906 Act, the Committee concluded that industry dissatisfaction was present despite Australia having one of the broadest design registration systems in the world. Industry wanted more protections.^[37] Professor Lahore chaired the committee and described the process as “the most contentious series of meetings over which [he has] ever presided”, likely due to the hybrid nature of designs sitting between patents and copyright.^[38] Amongst other things, the report recommended significant changes to the infringement test, including a list of factors a court should consider when determining infringement and a test of ‘substantial reproduction’.

Growing industry concerns over the system led to the Australian Law Reform Commission (ALRC) being asked in 1992 to review the registration system. The ALRC handed down its final report in 1995, recommending that Australian law needed to promote design innovation.^[39] The report noted that design practice had evolved into a crucial aspect of manufacturing and marketing since the introduction of the 1906 Act.^[40] However, the law often viewed design as a superficial element of a product despite its significant impact.^[41] On February 1, 1999, the Australian Government announced it would implement the ALRC report and repeal the 1906 Act. On 17 June 2004, the Designs Act 2003 (Cth) commenced. Over the past two decades, the 2003 Act has explicitly been amended five times since its commencement. Explore the various amending pieces of legislation below.

Despite the efforts of the ARLC and other reviews, the Australian registered designs system continues to be the subject of policy reviews. After introducing the Designs Act 2003 (Cth), concerns about the effectiveness of the design system were raised again, specifically whether it was meeting its original policy objectives. In May 2012, the former Advisory Council on Intellectual Property (ACIP) was asked to investigate the effectiveness of the designs system. ACIP was described as ‘an independent body appointed by the Australian Government. ACIP advises the Federal Minister for Industry and Science—and the Parliamentary Secretary to the Minister for Industry and Science—on high-level policy matters relating to patents, trade marks, industrial design, and plant breeders’ rights.^[42] ACIP advised the Minister, the Parliamentary Secretary or the Director General of IP Australia on the administration of these intellectual property (IP) rights.^[43] In examining the designs regime, the group approached the review with the following three questions in mind.^[44]:

1. 1. Has the Designs Act ‘provided a simple, cost‐effective designs system that provides Australian designers with more effective rights’?
   2. Are the provisions in the Designs Act operating as intended?
   3. Should policy decisions implemented in the Designs Act be reconsidered in light of experience with the new designs system and international and technological developments in the intervening decade?

ACIP released its final report in March 2015.^[45] The group recommended harmonising Australia’s design protection system with international practices and treaties.^[46] In particular, the group recommended investigating joining the Hague Agreement and working with WIPO on a Designs Law Treaty.^[47]

ACIP recommended many changes to the Designs Act. Specifically, the group recommended:^[48]

• compulsory examination for renewed designs
• removal of the option for publication of designs as an alternative to registration
• the re‐introduction of an opposition process
• introducing a grace period to protect against inadvertent disclosure of a design
• introduction of automatic publication at six months after the filing date
• changing the terminology used in the Act to clarify the distinction between a registered design and a certified design
• introduce protection for virtual or non‐physical designs
• extend the enforcement of design rights to include authority for the Australian Customs and Border Protection Service to seize infringing goods.

ACIP also identified some technical changes to correct anomalies, streamline the processing of design applications and enhance the effectiveness of the overall system.^[49]

Shortly after ACIP reviewed the designs system, the Australian government, on August 18, 2015, requested that the Productivity Commission ‘undertake an inquiry into Australia’s intellectual property arrangements, including their effect on investment, competition, trade, innovation and consumer welfare’.^[50]. This review included a review of the registered designs system.

The final report, released on August 18, 2016, examined opportunities for the design system, drawing on ACIP’s review and the Government’s eventual response to that report.^[51] The Productivity Commission specifically called out the low uptake in those seeking protection with a registered design and identified many factors leading to this result.^[52] The Productivity Commission did not make any specific recommendations and identified that the Australian Government was already committed to implementing many of the ACIP recommendations. The Productivity Commission, however, did recommend that the Australian Government introduce a specialist intellectual property list in the Federal Circuit court to introduce a low-cost avenue for intellectual property enforcement currently sought by designers.^[53]

Following these reviews, on 6 May 2016, the Australian Government responded to the ACIP report on the designs system and agreed to most of the recommendations.^[54] The Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth) introduced amendments that implemented some of the ACIP recommendations. What was introduced with the amending legislation included:

• a 12-month grace period to file a design application;
• an infringement exemption for prior use to protect third parties against infringement if they use a design after a disclosure;
• removed the publication option for filing a design;
• introduced an automatic registration six months after filing;
• amended the innocent infringer defence; and
• provided a right for an exclusive licensee of a registered design to commence legal action against third parties for any alleged infringement of a registered design.

IP Australia is still working to improve the Australian registered design system. They are working on a second phase of reforms. These reforms follow some of the recommendations left over from the ACIP report, including how the system could accommodate designs for non-physical or virtual products, designs for select parts of products, and flexibility for designers in protecting their designs as they evolve (also known as iterative design). These will be explored further in Chapter 11.