Chapter 15. Further Designs

Date Published

15.1  Introduction

According to Regulation 1.04 where an application shows more designs than is stated on the application form, the application is said to include further designs.

15.2  More than One Design

At lodgement, all of the designs identified by the Applicant in an application will be allocated a separate design number. As part of the registration formalities check, the Formalities Assessor must ensure that representations for each identified design do not show more than one design. Where there are further designs designs (i.e. more than one design) in an application which have not been identified by the Applicant, a Formalities Assessor will issue a formalities notice, and the Applicant will have an opportunity to respond.

The question of further designs will need to be addressed on a case by case basis, but generally, “variations” and “alternate embodiments” are too different to be considered one design.

15.3  More than One Product (Common Design)

A common design application is one where the same design feature is shown in relation to more than one product. This means that the application needs to include more than one product name and show more than one representation (which corresponds with the different product names included). There is no requirement that the different product names included be classified in the same Locarno class.

A common design feature is not limited to physical characteristics. In addition to physical similarities, products (which may differ in overall shape) could share a common pattern and/or ornamentation, for example the same pattern applied to a dress, pair of shoes and handbag. Although the overall shape of each product included in a common design application may be different, it must be clear that the same design is shown in relation to all the products. Where two products by their very nature cannot strictly share the same overall shape, consideration should be given to the areas that are able to share the same design.

Examples of products which may have differences in overall shape, but in practice often have, and could share the same (common) design include:

  • knives, forks and spoons (handle design);
  • curtains and cushions (pattern and/or ornamentation);

  • car and toy car (overall shape and appearance).

Further information regarding the requirements for representations for common designs can be found at Part 1, Chapter 14.3. Information regarding product names can be found at Part 1, Chapter 7

15.4  Dealing with Further Designs

If it is established that there is more than one design in the application, a formalities notice must be sent by the Formalities Assessor to the Applicant indicating that more than one design has been identified. Where there is more than one design in an application, these are often known as ‘further design(s)’.

Where further designs have been identified as an issue by the Formalities Assessor, the Applicant has the following options:

Remove the further design(s) by agreeing in writing to any of the following:

A. exclude the further designs;

An Applicant can file the further design(s) as an excluded application with agreement to exclusion in writing (see point 1, above) (note that to do this the Applicant should indicate so and agree in writing to exclude the relevant design and pay the fee), or alternatively

B. withdraw the further designs;

An Applicant can withdraw a design by lodging a request in writing, or alternatively

C. combine the filings into a multiple application.

Pay the additional fees to keep the further design(s) in the same application (also known as a multiple application). In the case of a multiple application the designs will have different filing numbers, but the application will be the same. A fee will be payable for each design contained in any multiple application.

Where the further design(s) identified fall under a different Locarno Class to the initial design, this option is not available. Further information regarding multiple applications can be found at Part 1, 1.8.