Newsletter - December 2021

 

New intellectual property legislation in Fiji

 

Fiji is introducing new legislation covering trade marks, patents and designs. The new Acts were gazetted on 20 August 2021 and while the commencement date is currently unknown, it is expected these will come into force in the near future.

The trio of new Acts serve to modernize intellectual property protection in Fiji by adopting the Paris Convention and the Nice Classification, and providing the opportunity for Fiji to accede to the Madrid Protocol in the future, which will allow international trade mark registrations to designate Fiji.  

The new Trade Marks Act will recognize geographical indications, bringing Fiji into line with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). It will also broaden the definition of a “sign”, allowing non-traditional trade marks such as shapes and sounds to be registered. 

The new Patents Act will introduce requirements for novelty, inventive step and utility, bringing Fiji into line with international standards for patents. The patent term will be extended from the current 14 years to 20 years. 

The new Designs Act will allow design applications to be filed in Fiji, whereas previously design registrations in the United Kingdom extended to Fiji automatically. The Fijian Designs Act closely mirrors the New Zealand Designs Act, but with a shorter term of protection of 10 years. 

If you operate a business in Fiji and are interested in learning more about the new legislation and how it might impact you, please contact us. 

Changes to the Australian Designs Act 2003.

Changes have been made to the Australian Designs Act 2003. Most of the changes come into force on 10 March 2022, although some changes of a more technical nature are already in force.

 

The changes include:

Exclusive licensees 

Exclusive licensees will have the right to issue infringement proceedings. 

 

Familiar person

The current standard used to determine whether a design is substantially similar in overall impression to another is that of the ‘informed user’. 

The new standard will be that of the ‘familiar person'.  In other words, the standard will be of a notional person familiar with the product, rather than a notional user of the product.

 

Grace period

A grace period is introduced.  The grace period is 12 months (which is the same as the grace period under Australia’s Patents Act).

The grace period will protect designers who publish or disclose their designs before seeking protection. 

One point of importance is that the grace period commences at the priority date of an application to register a design.  This means that applicants who disclose a design and then file in, for example, the USA within one year from the first disclosure will be able to file in Australia claiming priority from their US design application.  They could also file in Australia without a claim to priority, provided the application is filed within the one-year grace period and is not caught by the exclusion that designs published by national or international designs offices are not eligible for the grace period.  

We therefore recommend that applicants who first file overseas should rely on making a claim to convention priority under the Paris Convention, rather than relying on the grace period.

The introduction of the grace period results in the introduction of a ‘prior user right’.  This protects third parties who start using a design after there has been a disclosure of the design but before a design application has been filed.  The third party will need to be able to show that they had no reasonable way of knowing that an application for design registration had been filed.

 

Registration process is simplified

The registration process has been simplified. 

It is important to note, however, that the two-step process for obtaining enforceable rights remains.  An Australian design application will proceed to registration after a formalities examination only.   Certification must be requested to enforce a registered design.  At this point substantive examination occurs.

 

Grounds of revocation

The grounds of revocation are proposed to be updated to add that the design may be revoked for an act of fraud, false suggestion or misrepresentation at any stage in the process of obtaining a registered or certified design.

The ground of revocation based on lack of entitlement will be qualified to give the Court discretion not to revoke a design on the basis of a lack of entitlement. This reflects the similar scheme under the Patents Act. This will prevent the possibility of revocation based on error or mistake alone by the true designer, yet retain it for true instances of lack of entitlement resembling theft.

 

December and January Holiday Hours

Zone will be closed for business from Friday the 24th of December up until Monday the 10th of January. A skeleton staff will be available for urgent IP filings from the 3rd of January 2022.

Please note the Intellectual Property Office of New Zealand will also be closed from the 25th of December up until the 4th of January 2022.

IP Australia’s Office will be closed from Monday the 27th of December up until the 3rd of January 2022.

Applications and documents submitted on these dates will have the following working day as their filing date. If the deadline for filing an application or document falls on these dates, then the application or document will be filed the following day.