D03.8 Further reports

Date Published

Where the Registrar has issued an examination report, the owner can respond by:

i. contesting, in writing, the ground for revocation; and/or

ii. requesting amendment of the Register.

Where amendments are filed:

  • the examiner will consider compliance with reg 5.05(1), and whether the amendments meet the requirements of s66(6) {that is, they neither increase the scope, nor alter the scope by including new matter}. Any adverse findings [r5.05(2)], including any direction to file a substitute document or representation, will be included at the start of the further examination report.

Comment:
2nd and subsequent examination reports will/should always provide an indication of the amendments that have been filed, and a statement to the effect that those amendments have been considered.

  • If the amendment is allowable (that is, it meets the requirements of reg 5.05(1) and s66(6)), the examiner will continue the examination as if those amendments had been made.
  • If the amendment meets the requirements of s.66(6), but not of reg.5.05(1), the examination will continue as if those amendments had been made. However the examiner will include a note that examination has proceeded on the assumption that the owner will timely rectify the deficiencies under r5.05(1) that have been identified – failing which the grounds for revocation that would have been overcome by reason of the amendments would exist.

Comment:
Reg 5.05(1) issues are in the nature of formality requirements. Hence it is appropriate to assume that the owner can (and will) readily overcome those deficiencies – and therefore the substance of the examination should proceed as if the amendments had been made.

  • If the amendment does not meet the requirements of s.66(6), the examiner will indicate:
    • The grounds for revocation that will exist if the amendment is allowed (including, if no grounds for revocation would exist, an express statement to that effect); and
    • The grounds for revocation that exist without the amendment (including, if no grounds for revocation would exist, an express statement to that effect).

Comment:
Where an amendment does not comply with s.66(6), options for the applicant are (i) to argue that the amendment does comply with s.66(6), or (ii) propose different amendments. Hence it is important to indicate the grounds for revocation both with, and without, the amendments. The amount of detail that should be provided for each of the scenarios will depend on the factual circumstances.

The Registrar must reconsider whether there is a ground for revocation having regard to the arguments provided by the owner, and on the assumption that the proposed amendments have been made.