- 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
D03.9 Being 'satisfied'
Examination is essentially an assessment of whether a design is new or distinctive. The ultimate test to be applied in examination is one of being satisfied about the presence or absence of a ground for revocation. Thus:
- S.67(1) applies if the registrar is satisfied that no ground for revocation has been made out; and
- S.68(1) applies if the registrar is satisfied that a ground for revocation has been made out.
This raises the questions of what is required to be satisfied, and what to do if the examiner is not satisfied with regard to both possibilities.
The Designs Act does not entail any ‘benefit of doubt’ considerations. Submissions that are intended to ‘raise doubt’ about the presence of a ground for revocation are misguided – as the concept of ‘being satisfied’ does not equate to ‘with absolute certainty’. That is, it is logically possible to be satisfied that a ground for revocation exists even in the presence of an element of doubt. Accordingly, agents should be focussing submissions towards establishing the presence or absence of ‘being satisfied’ that a ground for revocation exists, rather than trying to establish the presence of some element of doubt. Furthermore, it is the examiner’s assessment that is relevant – not that of the owner or agent. That is, agents need to persuade the examiner by means of reasoned argument based on evidence that no ground for revocation is made out. In this regard, the agent’s personal views of the merits of the case are essentially irrelevant.
Note that this does not mean that an examiner should maintain an objection merely on the basis that the agent has not argued against it; examiners must always re-appraise the validity of an objection at each report stage.
The standard to be applied in the examination of a patent was discussed on pages 166 and 167 of the Ergas report [Review of intellectual property legislation under the Competition Principles Agreement, September 2000]. The Ergas report recommended moving from a standard of benefit of doubt to one of balance of probabilities. This recommendation was accepted, and implemented in the Patents Act 1990 by No 160 of 2001. Sections 67 and 68 of the Designs Act 2003 use the same language (being ‘satisfied’) that was used to implement the Ergas recommendation in the Patents Act. That is, consistent with the rationale for the Patents Act applying a balance of probabilities test, the Designs Act 2003 implemented a balance of probabilities test in examination.
The word ‘satisfied’ has a connotation of being convinced. The requirement of being ‘satisfied’ requires more than a mere personal opinion. It depends upon there being clear and convincing reasons based on evidence. Furthermore those reasons must demonstrate that the proposed interpretation and conclusions are preferable to any contrary argument that has been presented.
Particular issues are:
- The reasons must be based on evidence. While being ‘satisfied’ is inherently a state of mind, that state must be formed by a logical assessment of the evidence. Being ‘satisfied’ cannot arise from mere opinion or belief unsupported by evidence.
- Mere assertion of something by the examiner does not constitute evidence. An examiner may have an opinion about certain facts – and in the first instance it may be quite appropriate to issue a report based on that opinion. But to maintain an objection in the face of a counter argument, the examiner will need to substantiate their objections by way of evidence (such as by search results). Maintaining objections on the basis of personal belief unsubstantiated by independent evidence may leave the examiner open to the criticism of bias.
- The examiner must “give proper, genuine and realistic consideration to the merits of the case” [Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1 (FCA/Sheppard J)]. That is, the examiner must have regard to all relevant material on the file, and treat the owner’s submissions objectively. Issues such as the perceived value of the design, the tone of the agent’s response, the fact that the response did not properly deal with the issues raised in a previous report, or that one argument is that of the examiner (and by implication preferable) are irrelevant.
A particular issue is the application of the standard of the informed user. In many situations the examiner’s assessment of the informed user standard will be influenced by their personal experience. However the examiner’s personal experience is never definitive of that standard. If the owner challenges the standard of the informed user applied by the examiner (by expressing a different standard, with supporting evidence), the examiner will need to substantiate their views of the standard by way of evidence (e.g. search results) if the objection is to be maintained.
There may be situations where the examiner is uncertain about how the law applies to the particular facts of a design. In such situations the examiner should seek advice about the law from the Team Leader, such that the examiner is satisfied about the interpretation of the law in so far as it relates to the particular design. Any arguments about the interpretation of the law are to be discussed with the Team Leader.
There can be situations where there is material uncertainty in the disclosure of a citation. For example, in Sportservice Pty Ltd  ADO 6 the design related to a product that was inherently of circular cross-section, with that having a material effect on the overall impression. Where there is uncertainty about whether the citation discloses a material visual feature, the Registrar cannot be satisfied that a ground for revocation has been made out.
D03.9.1.1 ‘Satisfied’ as to prior art
Most prior art objections are based on s 15(2)(b), so being satisfied will involve some evidence of the publication of the document in which the prior art appears.
Section 15(2)(c) is more complex since the priority date of the potential prior art may not have been verified. The examiner will then need to verify the priority claim of the potential citation.
Section 15(2)(c) and excluded design priority
This will typically have been verified as part of the formalities check. See Part 1, Chapter 11 of this manual for how to verify this type of priority.
Section 15(2)(c) and convention priority
Unlike excluded designs, convention priority claims are not routinely verified at the formalities stage. They can be verified at any time by asking for copy of the basic application from the registered owner under reg 3.06(3).
If the owner does not respond in time, or if the document forwarded does not disclose the design, the convention claim is forfeited. The potential citation should also fall away.
Only if the owner responds in time with a document that verifies the claim can the examiner be satisfied that a ground for revocation is made out. This clears the way for the objection to be raised in an examination report.
Section 15(2)(c) and other types of priority
In other cases, the examiner will need to consider the relevant documentation on the file and any associated files.
D03.9.2 Not satisfied
Sections 67 and 68 both require the Registrar to be satisfied as to the absence or presence of a ground for revocation. Quite clearly, if the Registrar is satisfied that either s67(1) or s.68(1) applies, the other cannot apply. However the converse does not follow. That is, the fact that the Registrar is not satisfied that either s.67(1) or s.68(1) applies does NOT mean that she is necessarily satisfied that the other DOES apply. It thus follows that an examiner may not be satisfied that a ground for revocation exists, AND at the same time is not satisfied that a ground for revocation does not exist.
For example, in response to an objection the owner provides a declaration about the informed user standard. If the declaration is accepted at face value, the examiner would be satisfied that there is no ground for revocation. However the declaration is such that the examiner has serious doubts about its credibility. [see D09.4.6.4 for guidance on assessing declaratory evidence.]
Examination is usually completed when the examiner is satisfied that there is no ground for revocation (as required in sections 67 and 68). Consequently, if at the first report stage the examiner is not so satisfied, they will raise relevant objections. In particular, if the existence of a ground for revocation is ‘arguable’, this alerts the owner to the issue, and provides them opportunity to place on record their arguments why the ground for revocation does not exist.
If at a further report stage a new issue arises, and the examiner is not satisfied that there is no ground for revocation associated with that issue, they will raise relevant objections.
If the relevant ground for revocation was raised at a previous report, and the examiner is undecided about whether or not a ground for revocation is made out, the examiner should discuss the case with their supervisor. It must be remembered that the decision to revoke the design is conditioned on the Registrar being satisfied that a ground for revocation has been made out. If the Registrar is not satisfied that a ground for revocation exists, AND at the same time is not satisfied that a ground for revocation does not exist, the fact that refusal would lead to irretrievable loss of rights will lead to examination being taken as completed. However the Registrar will not complete examination on this basis unless it is apparent that further prosecution is unlikely to further clarify the issues.