- 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 17. Formalities Checking Procedure
17.1 Purpose of the Formalities Check
The purpose of the formalities check is to ensure that any design that is accompanied by a request for registration is also accompanied by enough information to allow it to be entered on the Register.
Section 41 provides that if the Registrar is not satisfied in relation to the formalities of the design application the Registrar must notify the applicant stating:
a. the matters in relation to which the Registrar is not satisfied; and
b. that the applicant may request that the Registrar amend the application under section 28; and
c. that the application will lapse at the end of the period prescribed by the regulations for the purposes of paragraph 33(1)(b) unless, during that period:
i. the application is amended; or
ii. the applicant responds in writing to the notice stating why the applicant considers that the application does not need to be amended
and as a result of the amendment or response, the Registrar is satisfied as mentioned in section 39 or 40, as the case requires.
The applicant will be informed of any deficiency in their application in a “deficiency notice”.
The Registrar may notify the applicant by any means of communication provided the content of the communication is readily accessible so as to be usable for subsequent reference (s144D).
17.2 Deficiency Notices
Guidelines for an Acceptable Designs Pre-Registration Formalities Notice
A deficiency notice should include all of the deficiencies for all of the designs in an application. It should therefore clearly reference all of the design numbers that constitute that application.
All deficiencies should read clearly and provide sufficient information. Use the word processing codes where applicable, and always use plain English. Target the notice to the applicant. The notice must be sufficiently clear and comprehensive that the applicant is left in no doubt as to the deficiency being raised.
Where appropriate, options should also be provided indicating how the applicant might amend the application so that the design can be registered. Explanations should be given, in broad terms of how to propose amendments to correct the deficiencies and what amendments are allowable.
If any deficiency is based on an assumption, then clearly state that assumption. E.g. "Your application appears to show more designs than stated on your application form."
"Furthers" is the term used for applications that have had a deficiency notice issued. As these cases have time limits in which to correct deficiencies, the officer should see how close they are to the final date.
The applicant has 2 months from the date of the first notice in which to overcome any objections raised. After that period, applications automatically lapse. If the applicant wishes to continue with the application a request for an extension of time under s 137 of the Designs Act will have to be lodged.
The officer should endeavour to process all furthers within the week they are received. However, applications nearing the final date should be processed as soon as possible after receipt.
If a further report is raised, the officer should clearly indicate which deficiencies have been fixed, and those that have not.
If a deficiency was missed and not raised in the first notice it should be raised in a further notice. Suitable apologies for the omission should be made.
Where appropriate, a free extension of time under sub-section 137(1) will be granted.
Various sections of the Designs Act and Regulations have prescribed times in which particular actions must be completed or performed. An applicant or owner can apply for an extension of time under s.137 to extend any of these prescribed time limits.
The situations that are likely to arise in formalities are:-
a. When an application is approaching the final date for a response and still wishes to continue with the application
b. If an application has lapsed because it has passed the reply date and the applicant wishes to continue with the application
c. If the applicant wishes to extend the date for lodging an application covering excluded designs
d. If the applicant wishes to claim convention priority where they have lodged their application more than six months after lodging the convention application.
Generally it will be the applicant or their attorney who will initiate an application for an extension of time to register an application before the application lapses, though the possible need for such an extension may be suggested by the formalities officer in a notice (if a notice is being sent).
Similarly, applications for extension of time to lodge divisional and convention applications will most often be initiated by the applicant or their attorney. The formalities officer may advise the applicant that such extensions are available if it is likely that the applicant would not be familiar with such provisions.
Where a formal application for extension has been made (i.e. where all relevant documents and fees for the extension have been lodged) the application should be passed to the appropriate delegate for approval.