Chapter 7. Product Name

Date Published 16 Dec 2020

Regulations 4.04 and 4.05 specify that the application must identify the product or products in relation to which each design is sought to be registered sufficiently to enable each product to be classified in accordance with the Australian classification system, which is based on the Locarno Agreement. It is the responsibility of the applicant to correctly specify the product bearing the design and the Formalities Assessor to correctly classify the design application.
A product name should confirm that a product, as defined by section 6, has been included as part of the design application. A “product” is defined as a thing that is manufactured, or hand made. The overriding requirement will be that the item disclosed in the application is a “product” for the purposes of Australian law. Trade marks or brand names supplied as the sole product name(s), without other references to a “product”, do not meet the definition of a product under Australian law and if supplied, will be queried by a Formalities Assessor with a request to provide a generic product name or descriptor of the product, as these cannot be classified.
The product name should not be vague and must be clear enough to enable accurate classification in accordance with the Australian classification system. Whilst the Locarno classification does inform the Australian classification system and it does include items such as logos, graphical user interfaces and type-fonts, these items are not considered to be a “product” of manufacture and thus these do not meet the definition in section 6 of the Act. Just because item is included in the Locarno classification system does not mean it meets the definition of a “product” for the purposes of Australian law. For clarity, any application that references “a logo”, “graphical user interface” or “type font” solely as the product name will be queried by a Formalities Assessor. In the case of a logo, this will be queried with a view to the applicant providing the name of the product which the representations show the logo being applied to.
For the purposes of formalities checking, extraneous information such as descriptive matter or embellishment should be ignored, provided that the information does not result in reasonable doubt as to:
- Whether a product is in fact applicable, and if so, what the product is, including the nature of it
- Whether the representation(s) match the product name
- What is the most appropriate classification.
Where there is inconsistency between the product name given on the application form and the representations, the product will be identified on the basis of the representations with an assumption that the product name is in error and a deficiency notice to be issued. Inconsistency between the product name and representations also results in uncertainty and difficulty meeting the requirement that the product name enables accurate classification under the Australian classification system. The applicant will be given the opportunity to provide a product name which is consistent with the representations.
Where the application is for a common design in relation to more than one product, the product name should identify all products as part of the application; this will involve, where appropriate, setting out the different names by semi-colon or other indicators. For example, in the case of a common design for a toy car and a car, the applicant may have the product name as, “toy car; car”. The representations of each of the products should also be labelled to make it clear which product is applicable to each representation.