- Part 1 - Formalities
- 1. Classification
- 2. Entitlement
- 3. Applicant Name
- 4. Applicant Address
- 5. Address for Service
- 6. (reserved)
- 7. Product Name
- 8. Section 43
- 9. Statement of Newness and Distinctiveness
- 10. Convention Details
- 11. Excluded Design Details
- 12. Registration / Publication Request
- 13. Designer Name
- 14. Representations
- 15. Further Designs
- 16. Amendments
- 17. Formalities Checking Procedure
- Part 2 - Examination
- D01 Citation Index
- D02 (reserved)
- D03 Examination Process
- D03.1 Overview
- D03.2 Requesting examination - requirements
- D03.3 Who may request examination?
- D03.4 Which Designs may be examined?
- D03.5 Court proceedings
- D03.6 Handling concurrent requests for examination
- D03.7 Handling requests for examination when a Certificate of Examination has previously issued
- D03.8 Further reports
- D03.9 Being 'satisfied'
- D03.10 Period for completion of examination
- D03.11 Withdrawal of request for examination
- D03.12 Interface with Court Proceedings
- D03.13 Intention to Certify
- D03.14 Material provided by a 3rd party
- D03.15 3rd Party Initiated Examinations
- D03.16 Revocation during Examination
- D03.17 Expedited Examination
- D04 Identifying the Design
- D04.1 Introduction
- D04.2 Design in relation to a product
- D04.3 What is a product?
- D04.4 Overall appearance, and visual features
- D04.5 Interpretation of representations
- D04.6 Role of a Statement of Newness and Distinctiveness
- D05 Designs which must not be registered
- D05 Designs which must not be registered - s.43, Reg 4.06
- D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)
- D05.2 Integrated circuits [s.43(1)(c)]
- D05.3 Medals [reg 4.06(a)]
- D05.4 Protection of Word 'Anzac' Regulations
- D05.5 Paper money, securities [reg 4.05(c)]
- D05.6 Scandalous designs
- D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]
- D06 Priority Dates
- D06.1 Background, general issues
- D06.2 Priority date - Convention Applications
- D06.3 Priority date - Excluded Designs
- D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54)
- D06.5 Priority date - Converted Applications
- D07 Prior Art Base
- D07.1 General Information/Background
- D07.2 Publicly used in Australia
- D07.3 Published in a document within or outside Australia
- D07.4 Designs disclosed in applications
- D07.5 Exhibitions, Unauthorised disclosures
- D07.6 Copyright overlap - s.19
- Appendix - Examiner's Worksheet
- D08 Searching
- D09 Assessing Newness and Distinctiveness
- D10 Amendments
- D10.1 Overview
- D10.2 Ambit of s 28 amendments
- D10.3 Ambit of s.66 amendments
- D10.4 Allowabililty - inclusion of matter not in substance disclosed
- D10.5 Allowability - increasing scope of the Design Registration
- D10.6 Amendments of Statement of Newness and Distinctiveness
- D11 Extension of Time - s.137
- D11.1 Introduction
- D11.2 s.137(1) - Error or Omission by the Registrar
- D11.3 s.137(2) - Summary of the Principles of Law
- D11.4 Making the Application - s.137(2)
- D11.5 Registrar's Discretion - s.137(2)
- D11.6 Advertisement of Extension - Subsection 137(4)
- D11.7 Period of Extension to be Granted
- D11.8 Common Deficiencies
- D11.9 Protection and Compensation Arrangements
- D12 Assignment etc of Designs, the Registrar
- D12.1 Introduction
- D12.2 Registering Assignments
- D12.3 Registering other interests
- D12.4 Correction of the Register - Regulation 9.05
- D12.5 Rectification of the Register by a court
- D12.6 Trusts, Bankruptcy, Insolvency
- D13 Ownership Disputes
- D13.1 Overview of ownership disputes
- D13.2 S.29 disputes
- D13.3 S.30 Disputes associated with recording assignments
- D13.4 S.52 Revocation relating to Entitled Persons
- D13.5 Application by Entitled persons after revocation
- D14 Publication, File access
- D14.1 Background, general issues
- D14.2 Documents not publicly available
- D14.3 Interaction with the Freedom of Information Act 1982
- D14.4 Production of documents under s.61(2)
- D14.5 Right of Lien
- D15 Surrender of a Design
- D15.1 Overview
- D15.2 Processing an offer to surrender
- D15.3 Discretionary considerations in Accepting the Offer
- D15.4 Surrender by consent - and ownership matters
- D16 Prohibition Orders
- Part 3 - Classification
- Amendments to the Eleventh Edition of the Locarno Classification
- Amendments to the Tenth Edition of the Locarno Classification
- Class Heading Summary
- Class 01 - Foodstuffs
- Class 02 - Articles of clothing and haberdashery
- Class 03 - Travel goods, cases, parasols and personal belongings not elsewhere specified
- Class 04 - Brushware
- Class 05 - Textile piecegoods, artificial and natural sheet material
- Class 06 - Furnishings
- Class 07 - Household goods not elsewhere specified
- Class 08 - Tools and hardware
- Class 09 - Packages and containers for the transport or handling of goods
- Class 10 - Clocks and watches and other measuring instruments, checking and signalling instruments
- Class 11 - Articles of adornment
- Class 12 - Means of transport or hoisting
- Class 13 - Equipment for production, distribution or transformation of electricity
- Class 14 - Recording, communication or information retrieval equipment
- Class 15 - Machines not elsewhere specified
- Class 16 - Photographic, cameras, cinematographic and optical apparatus
- Class 17 - Musical instruments
- Class 18 - Printing and office machinery
- Class 19 - Stationery and office equipment, artists and teaching materials
- Class 20 - Sales and advertising equipment, signs
- Class 21 - Games, toys, tents and sports goods
- Class 22 - Arms, pyrotechnic articles, articles for hunting, fishing and pest killing
- Class 23 - Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
- Class 24 - Medical and laboratory equipment
- Class 25 - Building units and construction elements
- Class 26 - Lighting apparatus
- Class 27 - Tobacco and smokers supplies
- Class 28 - Pharmaceutical and cosmetic products, toilet articles and apparatus
- Class 29 - Devices and equipment against fire hazards, for accident prevention and for rescues
- Class 30 - Articles for the care and handling of animals
- Class 31 - Machines and appliances for preparing food or drink, not elsewhere specified
- Class 32 - Graphic symbols and logos, surface patterns, ornamentation
Chapter 1 - Classification
Classification means sorting things into groups or classes based on their similarities. All designs are applied to products. As there is no system for classifying designs, it is the products which are sorted into classes. The classification of the products is based on their function, i.e. purpose or use for which the product is intended.
Design applications are classified in order to make searching for similar designs much easier. As searching is carried out by the public, legal representatives, overseas design offices as well as IP Australia, correct classification is extremely important. If registered designs are not classified correctly a search will not be effective.
1.2 Classification System
The classification system used in Australia is based on the on the "International Classification For Industrial Designs", (IDC) also called the Locarno Classification as it was established by the Locarno Agreement. Australia is not a party to this agreement, but the classification system is still used by this office. The 11th edition of the Locarno classification has 32 classes, the majority of which are further divided into sub-classes.
In Australia the sub-classes are further divided into sub-subclasses based on specific function/purpose of the product in that sub-class. For example:
05 – Class (Textile piece goods, Artificial and Natural sheet material)
06 – Sub-class (Artificial and Natural sheet material)
A – Sub sub-class (Wallpaper)
The Australian Designs Classification Codes can be accessed through the IP Australia website and is based on the Locarno Classification.
The Locarno Classification can be accessed through the WIPO website and contains a list of classes, an alphabetical listing of products, a list of classes and sub-classes, with explanatory notes and the General Remarks.
1.4 Finding the right Class
A classification will already be assigned following filing. However, the classification should be reviewed to ensure its accuracy. The information shown in the application is used to determine the correct class. The initial starting point should be the name of the product offered by the applicant. Ensure that the name of the product correlates to what is shown in the representations.
1.4.1 Once the product name has been identified, a brief search of the Register for the product to which the design relates may give insight to a suitable classification. It may be necessary to translate the applicant's provided product name to its generic form, e.g. "oral interpersonal communication device" to "telephone". When using this method, always consult the Australian Designs Classification Codes to determine whether the classification is appropriate.
The above is method for classifying will not always be effective. The following procedures may help with the less straightforward classifications.
1.4.2 (A) Another Word
Try to find another word that might describe the product, i.e. footwear could be shoe, storage furniture could be cabinet etc. (The particular style of product names found in Locarno become more familiar with frequent use.) Then use this other word to classify the product.
1.4.3 (B) Similar Word
Try to find the name of a similar product, i.e. stool to chair, pick to shovel, timepiece to watch or clock, diaper to nappy etc. Then use this similar word to classify the product.
1.4.4 (C) Purpose
If the use or purpose of the product is apparent, the “list of classes” or the “list of classes and sub-classes with explanatory notes” in Locarno can be used to identify possible classes that the product may fit into. After finding possible classes and/or sub-classes, the “list of goods in class order” should be consulted to try and find similar product(s).
1.4.5 (D) Owner
A search of the Owner’s earlier designs (in relation to similar products) can be useful to determine an appropriate classification
1.4.6 Statement of Newness and Distinctiveness (SoND)
If supplied, a SoND may give further detail in relation to the product which may assist in determining the most appropriate class(es) - also refer Chapter 9.1.
1.5 Sub-classes (Sub sub-classes)
Once the product is classified, check if the sub-class has been divided further into a set of sub-subclasses. If it does it will have to be further classified into that sub-subclass. Go through each sub-subclass and see if one suits the product. If not, it goes in the "Z" sub-subclass (also referred to as “NES” (Not Elsewhere Specified)).
1.6 Case of Doubt
Sometimes the product names and representations are so vague that it is not possible to accurately classify the design. In this instance, a tentative classification should be made. In these cases, more information should be requested when formalities are checked, which may result in an amendment of the classification when the product is clearly determined.
1.7 Multiple Classification
At times a single product may have more than one classification. This is rare but acceptable. An example is a folding beach chair with an umbrella and cooler attachments.
There may be occasions where a product could be classified in more than one class. For example, toner cartridges can be classified in 14-02, 16-03 or 18-02, depending upon use. Rather than classifying this product in all three classes, clarification should be sought from the applicant to ensure that the most appropriate class is selected.
1.8 Multiple Designs for more than one Product
When a design application contains multiple designs applied to different products, all of the products must belong to the same Locarno class. They may belong to different sub-classes, but they must belong to the same class.
When it is clear that not all of the products shown in a multiple design application fit in the same Locarno class, a deficiency notice should be sent, advising the applicant to delete or exclude one or more of the designs.
1.10 Common Design in Relation to more than one Product
When an application is for a single design and more than one product is both named and shown, each product should be classified accordingly. There is no restriction to Locarno Classification as affects 1.8.