Australian Designs - Who’s Filing What?

This article first appeared in The Watermark Journal Vol 23 No 2 (June 2006)

The Australian Designs Act 2003 (the new Act) was introduced on 17 June 2004. To date there have been approximately 10,000 design applications filed under the new Act.

In the ten years prior to the commencement of the new Act the number of applications filed each year was consistently between 4000 and 4500. Under the new Act the number of filings has increased with 5800 applications filed in 2005. Based upon the number of filings so far this year it is anticipated that approximately 4700 applications will be filed in 2006. The increase in filings has partly been due to more filings by overseas applicants. In 2005 approximately 50% of design applicants resided overseas compared with only 42% in 2003. During the mid to late 1990s only 25 to 35% of filings were by overseas applicants.

Figure 1 illustrates the number of individuals choosing to file their own applications under the new Act. Surprisingly the simplification of the registration process has not lead to more “self-filing” of applications with only 27% of all applications being self-filed by companies and individuals compared with 35% under the previous Act (Figure 2).

Design applications are categorised according to the product a design is applicable to. The number of filings of designs for articles of clothing and haberdashery in 2005 was approximately 40% higher than the average number of filings a year between 1997 and 2003. As illustrated in Figure 3 the increase in filings is largely due to the substantial increase in the number of designs being filed for men’s and women’s suits, jeans, dresses, T-shirts, knitted jumpers, shoes, boots and the like. The reason for the increase in filings may in part be due to the allowance under the new Act of dressmaking patterns as registered designs. In addition, the process of registering a design under the new Act is also less expensive and simpler with only a formalities check being required before registration. In order for a design registration to be enforceable it must then undergo substantive examination and subsequently be certified. Approximately 4% of design applications filed under the new Act have been certified.

Figure 4 lists the applicants that filed the most applications in 2005. In contrast to recent years two clothing companies, namely Scanlan & Theodore and Sportsgirl Pty Ltd are now amongst the top filers. A notable omission from the list in 2005 was the automotive company Holden which filed virtually no design applications in 2005 compared with 77 and 106 in 2003 and 2004, respectively. One reason for the recent decline in the number of filings by Holden could be the introduction in the new Act of a “right of repair” exemption against design infringement. The defence was introduced to ensure competition in the spare parts market and enables a spare part protected by a design registration to be used for the purpose of repair of a complex product (such as a motor vehicle) without the authority of the design owner. A more detailed discussion on the defence was provided in the October-December 2004 edition of the Watermark Journal (back copies of the Journal are available on our web site).

The average number of filings of designs for vehicle parts and related products over a two year period between the year 2000 and the commencement of the new Act in June 2004 was approximately 650. This compares with approximately 670 under the new Act over a comparable period of time. It would therefore appear that the “right of repair” defence has not had an impact on the overall number of designs filed for vehicle components. Filings do however appear to be down under the new Act for a number of specific vehicle components such as body panels, as shown in Figure 5.

A review of the effectiveness the “right to repair” clause and other provisions of the new Act is presently being undertaken by the Australian Designs Office. The review should be completed this year and will be reported in this journal when available.