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.




Disadvantages
Australian consumers will pay
more to foreign designers
(extended 15 year monopoly
for designs - more international
design filings in Australia).

Australian IP professionals
receiving less business (non-
resident applicant who would
have engaged an Australian
IP professional to file,
prosecute, and manage a direct
application, instead switches to
the Hague system and has their
local IP professional file and
manage the Hague application).

IP Australia incurring setup
costs in the accession to the
Hague agreement.

Australian firms and designers
having to avoid more design
rights.

Non-IT set up costs for the
Government, such as the costs
of training examiners, making
legislative amendments, and
costs associated with the treaty
making process.

Australia has been
experiencing a
boom in public
consultations and
reform in intellectual
property. Public consultation on
the Economic Report
As previously mentioned, public
consultation on IP Australia’s
report to provide feedback on the
methodology and assumptions of
the economic analysis concluded
in May this year. Public response
to consultation has been largely
critical of the report. Some
submissions asserted that some
of the costs were vastly overstated
and that the nature of the monopoly
provided by a Registered Design
is not properly understood in
the economic analysis, with the
majority of the assumptions
made therein simply assumptions
with no real basis in reality.

IP Australia has advised that it is
considering submissions lodged
and will developing a response
to this consultation which will
be provided in the near future.

Inspire September 2018
Advantages
Saving on Government fees via
Hague Agreement.

Red tape savings (including
professional fees) for filing,
translation, examination and
renewals.

Incentivise additional innovation
and designs (ease of filing and
possible 15 year term).

08 Mark Williams, Senior
Associate BCSE(Hons) MIP FIPTA
mark.williams@pof.com.au