- Home
- Introduction
- 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
- Introduction
- 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
D03.10 Period for completion of examination
The scheme for examination entails an examination, written advice to relevant parties, the owner having an opportunity to propose amendments to the Register, and the Registrar reconsidering the Design.
The examination is completed when one of the following events occur:
i. The Registrar is satisfied as required under s.67(1) that either no ground for revocation has been made out, or a ground for revocation would be removed by the proposed amendments;
ii. The Registrar is satisfied as required under s.68(1) that the registration should be revoked; or
iii.The registration has ceased under s.48(1)(a) – without the Registrar being satisfied under either of 67(1) or 68(1).
Importantly, when the period prescribed in regulation 5.04 expires, the registration of the design ceases. That is, the owner has a specific time period from the date of the first examination notification to overcome all grounds of revocation – failing which the registration will cease (subject to the operation of s.137).
The normal period for completion of examination is 6 months from the date of the first examination notification [r.5.04(a)]. The period for completion may be a longer period in the following circumstances:
i. If material is provided under s.69 of the Act, and a new ground for revocation is included in an examination notification – the period is the later of 3 months from the date of the notification that first raises the new ground for revocation, or 6 months from the date of the first examination notification [r.5.04(b)];
ii. If the owner requests to be heard under s.68(4) [r.5.03(6)(d)] – such period as the Registrar determines [r.5.04(c)], including any appeals [r.5.04(c)(iii)]
iii. Examination is discontinued because of relevant court proceedings [s.63(4)] – such period as the Registrar determines [r.5.04(c)].
Note: When s.63(4) applies, the examination is merely put on hold pending the conclusion of the court proceedings, and is resumed after the conclusion of those proceedings. See D03.12 Interface with Court Proceedings.
In routine examination circumstances, the Registrar will not initiate formal proceedings for revocation under s.68(1). Where the owner disagrees with the examination, it is for the owner to request a hearing under s.68(4). Each examination notification should include a note to the owner informing them of their right to request a hearing under s.68(4) before the end of the 6-month period for completing examination.
D03.10.1 Last-minute responses; time for filing a request for hearing
It may sometimes happen that the owner responds to an examination notification very close to the end of the 6-month period for completion of examination. In those circumstances it is expected that examiners will take all reasonable steps to consider the response within the time remaining. (And in such circumstances it would be expected that the owner or their agent will have contacted the examiner by telephone to advise them of the response just filed, to facilitate timely consideration by the examiner.)
Where an owner responds to an examination notification near the end of the 6-month period, they may have concern about the complete loss of the Design rights if the examiner does not agree with their response. As a result owners might include with such a late response a precautionary request for a hearing under 68(4). In such circumstances examination will proceed as follows:
- The examiner will make all reasonable effort to deal with the examination in the time remaining [failing which an extension of time under s.137(1) may be applicable];
- Where the examiner is satisfied as required under s.67(1) within the time remaining, proceed under that provision. No action in respect of the request for a hearing is required;
- Where the examiner considers that a ground for revocation remains:
- issue another examination notification;
- issue an Invitation to pay with respect to the request for hearing; and
- advise that the provisions of s.68 apply – but only if the hearing fee is paid.
- Where the examiner is unable to be satisfied that there is no ground for revocation in the time available:
- issue an advice that the response was filed too late for the examiner to consider the response and be satisfied that there are no grounds of revocation;
- issue an Invitation to pay with respect to the request for hearing;
- advise that the provisions of s.68 apply – but only if the hearing fee is paid; and
- on payment of the hearing fee, complete the consideration of the response. If at this stage the examiner is satisfied that there are no grounds of revocation, the Registrar can proceed under s.67(1) without a hearing – but there will be no refund of the hearing fee. Otherwise the matter proceeds to a hearing.
Note: In the circumstances of last-minute responses being filed with a precautionary requests for a hearing, payment of the fee for requesting a hearing when filing the response is to be discouraged. The fee for requesting a hearing will only be refunded in exceptional circumstances; in particular, it will not be refunded merely because the hearing is no longer required. Owners should use the Invitation to Pay mechanism to ensure a hearing fee is paid only if it is really needed.