Australia opines on
designs: No agreement
on the Hague Agreement
Inspire September 2018
The economic question
of whether Australia
should join the Hague
Agreement concerning
the International
Registration of
Industrial Designs has
been considered in a
recent report issued
by IP Australia.

07 Public consultation on this report
concluded in May this year, with
the public’s response being
largely critical. It was asserted
that, when assessing the costs
and benefits of joining the Hague
Agreement, the costs were vastly
overstated and the nature of the
monopoly of a Registered Design
was not property understood.

In light of this feedback, IP
Australia is currently reviewing
its position, and will provide a
response in the near future.

Background In recent times, Australia has
been experiencing a boom in
public consultations and reform
in intellectual property. Industry
groups, the profession, and
individuals could be forgiven for
having ‘consultation fatigue’ -
providing comment over the last
few years on everything from the
trans-Tasman patent examination,
trans-Tasman patent attorney
registration, right through to the
attempted abolition of Australia’s
innovation patent system.

Most recently, interested parties
have been asked to provide
comment on an economic
report from IP Australia as to
whether Australia should join
the Hague Agreement.

Wizened designs law trainspotters
might say Australia’s talk of joining
the Hague Agreement is as old as
the Hague Agreement itself (which
in its original form dates back to
1925). In contrast, Australia joined
the Patent Co-operation Treaty in
1980 (a little over two years from
when it first entered into force) and
the Madrid Protocol for Trademarks
in the early 2000’s (a little over ten
years after it first entered into force).

Anecdotally, the lack of impetus
for Australia to join the Hague
Agreement over the years
has stemmed from the:
(relatively) low number of
design filings
fact that a number of
Australia’s larger trading
partners were not party to it
cost, in light of all of the above.

However, in the last few years,
the situation has changed with
a number of Australia’s largest
trading partners – notably Japan,
US, UK and Korea – joining the
Hague Agreement. There is also an
indication from China, Canada and
Thailand that they too will join the
Hague Agreement in the near future.

Review of the Designs Act 2003
Australia’s ‘new’ Designs Act
2003 (which replaced the 1906
Act) was reviewed three years
ago by the Australian Council
on Intellectual Property (ACIP).

One of the recommendations
of the ACIP report was:
Amending the Designs Act to
bring Australian designs law into
better alignment with equivalent
laws of major trading partners,
international treaties and proposed
international treaties such as the
Hague Agreement and the Designs
Law Treaty (including extending
the maximum term of protection of
designs from 10 years to 15 years).

The Economic Report
In 2018, in response to the ACIP
recommendation, IP Australia
completed a report which
investigates the implications
of Australia joining the Hague
Agreement. The report is largely
an economic analysis which
explores the costs and benefits
to Australia of joining the Hague
Agreement. The report found
that joining would result in both
advantages and disadvantages,
concluding that the economic
costs outweigh the benefits.