By Noelene Treloar, Of Counsel and Adrian Trioli, Principal Adrian M Trioli Intellectual Property www.adriantrioli.com
TOTAL LICENSING AUSTRALIA
Promoting Innovation in the Toy and Games Industry Changes to Australian Design Law**
Noelene Treloar The Toy and Games Industry increasingly relies on intellectual property (IP) to protect research, development and innovation and gain commercial benefits through licensing. Registration of industrial designs is one form of IP and plays a key role in the recognition of toy and game products. In Australia, design registration is a relatively quick and inexpensive procedure. Recent major changes to Australian Design Law provides support for toy and game owners to protect, enforce and licence their design rights in Australia. We focus on two changes below. •
Introduction - Designs in Australia
Design rights protect the new and distinctive appearance of a product – features such as shape, configuration, pattern or ornamentation. Registration of a design grants to the owner the exclusive rights to use, make, import, sell, hire or otherwise dispose of the product or authorise another person to do so – including through exclusive licensing! Under Australian Design Law, a design application undergoes an initial formalities examination by IP Australia and is then automatically registered within about six (6) weeks. A registered design can remain reg-
128
istered and not examined for the life of the registered design, being a maximum of ten (10) years, with a renewal due after five (5) years. Once a design has been registered, the design owner can request postgrant examination of the design by IP Australia whereby the visual features of the product are compared against the prior art base. Assuming that post-grant examination is successful, the registered design will then be certified. Requesting examination is not mandatory. However, enforcement action can only be taken against third party infringers once a design has been examined and certified by IP Australia. A design needs to be certified before a “cease and desist” letter can be issued to an alleged infringer. The Australian Government has recently made a number of refinements to Australian Design Law, with two significant changes highlighted below: 1.
A new 12-month Grace Period for SelfPublication or Disclosure
In a significant development for Australian Design Law, commencing 10th March 2022 and for publications or use on or after 10th March 2022, there will be a 12-month grace period for self-publication or disclosure before filing a design application in Australia. This step will bring Australia into line with jurisdictions such as the United States and the European Union. The introduction of the 12-month grace period provides greater scope for toy and game companies to work with third party designers, whilst reducing the risks of invalidating disclosures.
2.
Exclusive Licensees have the right to claim infringement
From 10th March 2022, the exclusive licensee of a design in Australia will have the right to bring design infringement proceedings. Whilst the right to obtain relief will only apply to conduct occurring after 10th March 2022, the change aligns Australian Design Law with the rights of exclusive licensees for other IP rights. This change recognises the impact design infringement can have on exclusive licensees. Depending upon the circumstances, the registered owner will still need to be involved in any design infringement proceedings (whether as a defendant or plaintiff). •
Summary
Research, development, innovation and licensing are key drivers of competitive advantage and success in the Toy and Games Industry. The introduction of a 12-month grace period for self-publication or disclosure of a design brings Australia into line with jurisdictions such as the United States and the European Union. The ability of exclusive licensees of registered designs to bring design infringement proceedings aligns with exclusive licensees of other IP rights. Could your business benefit from the changes? **Note:This article has been prepared for general information purposes only and not for the purposes of providing legal advice. Please contact the authors if you require assistance in Australia or New Zealand (www.adriantrioli.com). Ms Noelene Treloar will also be participating in the Australian Toy Fair Digital from 28 March 2022 to 1 April 2022. Otherwise, please liaise with your local IP Counsel to put measures in place to best protect your IP.
