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There have been a number of significant developments in the Australian intellectual property landscape over the last few years. To help keep brand owners up to date, we have highlighted below two of the more important developments to be aware of:

  1. Changes to the parallel importation provisions in the Trade Marks Act 1995; and
  2. A proposed change to the Designs Act 2003, which is likely to be implemented early next year and which will have significant repercussions. 

For further information on recent developments in IP, consider signing up to the ACC Australia’s webinar “Challenges for the Modern Brand Owner and Recent Developments in IP”, hosted by Marion Heathcote and Chris Jordan, here.

Parallel Imports

Parallel importation (or “grey market” importation) occurs when a third party purchases products overseas which have an Australian trade mark applied to them, and then imports and/or sells those products in Australia, without the consent of the Australian trade mark owner. 

What are the changes?

Up until recently, trade mark owners could to some extent control parallel imports of their overseas product into Australia by implementing licensing arrangements which were limited geographically. These geographical limitations could then be used to support an argument that the trade mark owner did not consent to any overseas product being exported from those regions into Australia.

Recently, however, this position has been changed. The Australian Government, on advice from the Productivity Commission, has introduced a new section 122A into the Trade Marks Act 1995 restricting the ability of trade mark owners to prevent parallel imports. 

Briefly, the new section provides that a person who uses a registered trade mark in relation to goods does not infringe that trade mark if:

  1. The goods are similar to goods in respect of which the trade mark is registered; and
  2. Before the time of use, the person had made reasonable inquiries in relation to the trade mark; and
  3. At the time of use, a reasonable person, after making those enquiries, would have concluded that the trade mark had been applied to the goods by, or with the consent of, a person who was, at the time of the application:

         a. the registered owner of the trade mark; 

         b. an authorised user of the trade mark; 

         c. a person permitted to use, or who has significant influence over the use of, the trade mark by the registered owner or authorised user.

Importantly, when considering whether or not a trade mark owner has given “consent” to the application of a trade mark in relation to particular goods, it will be sufficient if that consent was given subject to a condition, including a geographical condition. 

What does this mean for brand owners?

New section 122A applies to all actions for trade mark infringement which are commenced on or after 25 August 2018, even if the alleged infringement occurred before that date. This means that it is now much easier for parallel imports of goods bearing registered marks to lawfully enter Australia. 

Changes to the Designs Act: Proposal to introduce of a grace period

A recent report into the Designs Act 2003 has identified that many designers, through ignorance or inadvertence, publish their design before seeking legal protection. This results in them being unable to obtain design protection for their products. 

It is now proposed to introduce a “grace period” into the Designs Act 2003 to allow designers to protect the appearance of their products even if they have already been published.

What are the proposed changes?

In May 2020, IP Australia announced that it intended to proceed with the adoption of an automatic 12 month grace period. Once implemented, this will mean that an examiner, when deciding whether a design is “new and distinctive”, must exclude from consideration any of the following publications occurring in the period of 12 months before the priority date of the design application: 

  1. Publication or use of a design by the design applicant (or the design applicant’s predecessor in title); or
  2. Publication or use of a design by another person or body that derived or obtained the design from the design applicant (or the design applicant’s predecessor in title).

It is important to note, however, that publication by another person or body does not include publication by the Registrar or any international designs offices. (This means that the grace period will not apply to designs which are first published in international jurisdictions. Instead, these designs will need to be registered in accordance with the usual methods under the Paris Convention.) 

Prior use defence

One of the difficulties in introducing a grace period is third parties may have already used the design on the basis that it was not protected and those third parties may, without some protection, become liable for design infringement without legislative intervention. To address this concern, IP Australia intends to introduce a “prior use” defence (modelled on a similar provision in section 119 the Patents Act 1990).

Broadly, the current version of the draft provisions provide a defence to infringement of a registered design where, before the priority date of the registered design, a person had made or offered to make, imported, sold, hired, used or kept (or taken definite steps either contractually or otherwise to do any of those things) a product which embodied a design that was identical to, or substantially similar in overall impression to, the design that subsequently became registered. This defence will only be available to third parties who can prove they were engaging in such activity immediately before the priority date or where they can establish that they had only temporarily ceased those actions at that time.

There are a number of uncertainties in the way the prior use defence will apply including, for example, the requirements for establishing a third party had taken sufficient “definitive steps” to enliven the defence. 

What does this mean for designers?

The above changes have not yet been implemented. Going forward, it will still be best practice for designers to file any application for registration prior to the publication of that design. This will help in avoiding unnecessary (and potentially complicated) disputes about prior art and other use by third parties.

Where this is not possible, however, designers should ensure they are aware of, and take advantage of, the new grace period provisions once they are implemented. Designers and brand owners should continue to reassess the need for design protection over the course of the grace period, particularly in circumstances where the design becomes commercially valuable.

The grace period for registered designs is likely to be in place sometime in the next year.  

If you have any questions in relation to this article, or your brands intellectual property needs more generally, please contact Chris Jordan ( or Marion Heathcote ( 


Join Marion Heathcote, Principal | Trade Marks Attorney, Davies Collison Cave and Chris Jordan, Managing Principal, Davies Collison Cave Law, at the In-House Legal Virtual Conference where they will discuss the 'Challenges for the Modern Brand Owner and Recent Developments in IP'.


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