- 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 16. Amendments
Section 28 of the Act deals with amendments to applications.
Amendments under this section can be made to an application any time before registration or publication. Amendments can be made to any document accompanying the application, including the representations.
Section 28(3) states that proposed amendments cannot be allowed if the scope of the application is altered by the inclusion of matter that was not in substance disclosed in the original application.
A request to amend an application should be in writing and in accordance with regulation 3.09.
There could be any number of reasons why the applicant requests an amendment.
change of ownership in the design
change in the residential or address for service
to address deficiencies, so that the case can proceed to registration
an error in the representations
an error in wording in parts of the application
16.2 Scope of the Application/Inclusion of Matter
By amending the product name(s) or representations, the scope of the application might be altered. This is especially true when the amendment introduces new matter that was not shown in the application originally.
Very broad examples are given below. Each amendment should be judged individually in terms of the possible change to the scope of the application.
Where an amendment alters the scope of the application by the inclusion of matter which was not originally disclosed (not allowable):
a) In the product name:
When the applicant requests that the name be amended to include a product or part of a product that has not been shown in the representations. For example:
The original name was "container", and the applicant requests the name to read "Container and components thereof".
If the component parts were not shown in the original representations, the amendment should not be accepted, because the scope of the application would be altered by the inclusion of matter not originally disclosed.
b) In the substitution of new representations
i) In the case where the original representations are so bad (e.g. photocopied/faxed photographs that appear as a dark mass) that it is impossible to determine what the design is, substitution of new representations could alter the scope because the original design was indiscernible.
ii) When a request to substitute new representations shows that the design in the new representations is not at all similar to the original design, a deficiency notice should be sent to the applicant. In this case, the scope of the application would clearly be altered
Where an amendment alters the scope of the application but does not include new matter (allowable):
a) In the product name
Where the original name is too general to allow classification (see Chapter 7. Product Name)
i) "textile article" implies any product that has been made of textile material. This should be amended to name the products(s) shown in the representations.
ii) "article of clothing" implies any form of clothing. This could be amended to read "t-shirt".
b) In the substitution of new representations
Where an isolated graphic design has been lodged, a deficiency notice should be sent, noting the fact that the design is not shown in relation to a product (see Chapter 14.5). Amending the representations to show the design in relation to a product or products arguably alters the scope, but, so long as the product name(s) was originally indicated or implied the product(s) now shown, new matter has not been introduced.
Other allowable amendments are those where the scope of application is not affected. They could include amendments to the following:
- The name of the applicant
- The residential address of the applicant
Address for service
Statement of Newness and Distinctiveness
Excluded design details.
16.3 Amending the Name of the Applicant
Where an amendment would change the name of the applicant substantially, and the rights in the design were not assigned (see section 30 of the Act), a declaration and any other evidence should be forwarded stating and supporting the reasons why the error was made or why the name should be changed.
Before the amendment can be made, the checker should be satisfied that the reasons given on the statutory declaration warrant the amendment being made.
Note: In the case of an application containing more than one design, the applicant name must be the same for all of the designs contained in the application. This may become an issue when a change to the name is requested.
16.4 Amending the Address for Service
Most requests to amend the address for service are taken on good faith by the office, that it is the applicants wish to have the address amended. And, in most cases that is correct. However, there have been cases where a conflict of interest has arisen. In these cases, two addresses for service requests had been received for an application. This is what normally alerts the office to the fact that something is not right. This situation must be clarified before registration. A brief description of two such cases is given below:
- The address for service was amended from one attorney firm to another. However, correspondence was received from the previous attorney. Correspondence from the new attorney was also received. Both were claiming to be the address for service. The Office asked the attorneys to agree who was to be the address for service. In this instance the original address for service was to remain the address for service for the application and the other address for service was for the assignment that was taking place.
Correspondence was received requesting that the address for service be amended as per the request. Shortly after another request was received, accompanying the request were copies of a will naming the applicant's wife as the beneficiary. Legally the applicant’s wife is entitled to be the owner and therefore the amendment is allowable. The other request was from the applicant’s mother. She was not entitled to be the owner or agent.
In any case, clarification is necessary.
16.5 When a Formal (Written) Request has been received
Check to see that the following requirements have been met:
- a statement of proposed amendments should accompany the amendment request. Details of the amendment(s) and exactly what is to be amended should be set out on this statement.
other forms or documents that could accompany a request for amendment are; a substitute application form or substitute representations.
Once the above requirements have been met, carry out the following steps:
- Consider whether the amendment/s is/are allowable,
Check to see that all deficiencies have been addressed and fixed. In the case where they have not, a further notice should be issued. It should state which deficiencies that have been fixed and those that remain. Additional explanation of the deficiency may need to be supplied if they have not already been identified.
If the application/design can be cleared, the registration procedures should be initiated. If the application cannot be cleared, a subsequent report should be prepared.