Chapter 16. Amendments

Date Published

16.1  Introduction

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.

For example:

  • 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

  • Convention details

  • 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:

  1. 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.
  2. 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:

  1. Consider whether the amendment/s is/are allowable,
  2. 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.

  3. 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.