- 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
D07.3 Published in a document within or outside Australia
Document is defined by section 25 of the Acts Interpretation Act 1901 as including:
a. any paper or other material on which there is writing;
b. any paper or other material on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and
c. any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device.
‘Writing’ which is used in this definition is defined as:
writing includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form.
Thus besides the traditional concept of documents being on paper, documents also include things like tape recordings, CD's, DVD’s, floppy disks, computer data-banks, and photographs.
It is therefore clear that the prior art base includes information relating to designs which has been published in any of:
- in printed publications including magazines, newspapers, trade journals, catalogues;
- on the internet including on manufacturing websites, in advertisements, in articles;
- on the Designs or Design Patent Databases of overseas IP Offices; and
- electronically such as emailed newsletters.
D07.3.1.1 Trade marks and patents as citations
A trade mark may form the basis of a citation in two ways:
- a trade mark that is characterised by the visual features of pattern or ornamentation (such as a label, flag, napkin) might provide anticipation of a particular product bearing visual features the same as, or similar to, the trade mark. At issue will be the extent to which features indicated in the trade mark are part of the design, and the extent to which the product is disclosed (explicitly or inherently) with the trade mark.
A design may include visual features of pattern or ornamentation in a prominent and meaningful way, which is the same as, or substantially similar to, wording and / or imagery seen as part of a trade mark. For example:
Design for a label
Entry on trade mark register published prior to the priority date of the above design
The trade mark extract would be considered citable prior art as it consists of identical visual features that appear as part of the design for a label, including a similar overall shape.
This same trade mark extract would not be considered substantially similar in overall impression to a product which whilst including a representation of the trade mark, is sufficiently different in overall shape. For example, a design for a wine glass that includes a printed company logo. Even where a trade mark extract may include information suggesting that it will be applied to the product the subject of the design (for example glassware), the trade mark extract does not show this product and therefore is not considered citable prior art.
2. A shape trade mark which inherently discloses a product of some type having 3-dimensional features of shape and/or configuration, and possibly pattern and/or ornamentation. See below trade mark extract:
Citable trade mark extracts may also include those that whilst not seeking protection for the shape of the product, include the image of the shape (displaying shape and configuration) as part of the trade mark material.
A patent specification, to the extent that it discloses a design, can also be citable prior art by reason of s.15(2)(b). The specification may include patent drawings, illustrating the claimed invention, applicable to a product the subject of a design application.
Regardless of whether the product bearing a trade mark, or the subject of a patent is relevant to s.15(2)(a) or s.15(2)(b), in all instances, the question to be asked is – what is the design (if any) that is disclosed in the citation.
The criterion of ‘published’ relates to public availability. It is not limited to the process of producing multiple or a requisite amount of copies (such as the printing of a magazine).
A design is published in a document if:
- the document is one that a member of the public can inspect "as of right"; or
- a person not bound by express or implied confidentiality has knowledge of the content of the document.
For the first of these, it is not necessary to establish that any person has actually inspected the document before the priority date. It is sufficient to show that they could have inspected it. Similarly it is not necessary to show that the document could have been easily retrieved – such as by being correctly indexed in a library catalogue. It is sufficient to show that a person could have inspected the document – even if only by browsing.
A document is publicly available so long as it is publicly available somewhere in the world before the priority date. In particular, this means that examiners can take the publication date of a design or design patent in the database of another IP office as the date of it being published for the purpose of s.15 of the Act.
Note: For designs published by a foreign office, the dates of publication by that office are given under INID codes 43 to 46. It can be assumed that the design was publicly available on the earliest of those dates.
For a design to have been considered ‘published’, it should have been made available to the public without obligations of secrecy or confidentiality. In considering the circumstances which would impart an equitable obligation of confidence, the principal authority is the decision of Coco v AN Clark (Engineers) Ltd (1968) 1A IPR 586, which sets out two requirements to be satisfied for an equitable obligation of confidence to arise. First, the information must have the necessary quality of confidence, and secondly, it must have been imparted in circumstances importing an obligation of confidence.
It was found in Key Logic Pty Ltd (2017) ADO 8 that email correspondence containing representations of the subject design were not confidential despite the inclusion of a generic confidentiality footer below the signature block. When applying the test in the Coco decision, it was found that second limb of the test was not satisfied, namely the circumstances did not import an obligation of confidence and consequently the emailed images resulted in pre-publication.
D07.3.3 Within or Outside Australia
The Designs Act expressly includes publications anywhere in the world as part of the prior art base. The date of publication is the date of public availability – and for this purpose the public is anyone anywhere in the world. There is no requirement that the document be published in Australia before the priority date, nor that it be published to an Australian citizen before the priority date.
D07.3.4 Establishing publication date
For a document to be part of the prior art base, it is necessary to establish the date of publication preceded the priority date. The following principles apply:
- The key issue is to establish that publication occurred before the priority date. Documents published many years before the priority date may require little evidence of their actual date of publication, since the mere fact of their existence and their self-evident age may be sufficient in themselves. On the other hand, a publication occurring a few months before the priority date may require clear evidence of the actual date of publication to establish that it was in fact published before the priority date.
- For a publication by a Designs Office, the date of publication given by that Office on the publication [usually associated with one or more of INID codes 43 to 46] is prima facie evidence of the date of publication. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;
Note: It has been known for intellectual property offices to publish documents on a date different to that indicated on the publication. However this is an extremely rare occurrence, and would require evidence to establish that fact with regard to any particular document.
- Publications by reputable organisations may have a similar implied confidence in the accuracy of the date of publication on the document. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;
- Where a document gives a date of publication as a month, or a year, the date of publication is taken to be the last day of the month or year – unless there is contrary evidence of the actual date of publication.
- Where a document is located on the Internet, the usual rules of publication date apply. However there are significant evidentiary issues that arise from the nature of the internet. In particular, what is the basis for asserting that a page as viewed today is the same as before the priority date? There are many web sites where the nature of the publication is such that there is a very high presumption that the relevant page is unchanged. There are many more sites where no assumptions can be made. Note in particular there is absolutely no reason to assume that statements such as ‘page last updated on xxxx’ have any reliability whatsoever.
There are a number of public web sites where people can upload images. On such sites, a distinction must be made between the purported dates of the images, and the upload date. The purported date of the image depends on the date arbitrarily set in the camera by the user; additionally it can be easily edited with appropriate software. Examiners should treat such dates as having no presumption of validity. However the date the image was uploaded to the site has a reasonable presumption of validity – assuming the site is independent, and has no commercial interest in the relevant products.
Proceedings before the Registrar are not bound by the Rules of Evidence. The Registrar is entitled to have regard to any matter that is logically probative [See, for example, the judgement of Deane J. in Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666]. But should the matter be appealed, those proceedings will be governed by the Rules of Evidence. See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited  FCA 934 at para 125 et seq, for one example of how the Federal Court has treated the WayBack machine in the context of the Rules of Evidence.
Where an examiner is desirous of establishing the date of publication of a web page, they must not contact the owner of the site. Any response by the site owner would be at best of an evidentiary nature, and non-definitive absent allowing the design owner the opportunity to cross-examine the site owner. Further, if the site owner is a commercial competitor (which may be likely if it contains anticipatory material), there are serious questions about the reliability of any dates provided – especially if there is a commercial advantage in giving an early date.
Where a relevant document is found that was plausibly published before the priority date, but there is some doubt about that fact, the examiner will raise the relevant ground of revocation in the first instance. If the owner challenges the fact of publication before the priority date, several scenarios might apply:
- If the web site was owned by the design owner (or an affiliated company), the owner inherently possesses the relevant knowledge about when information was placed on their web site. Accordingly it is appropriate for the owner to provide a declaration setting out relevant facts, thereby providing a sound evidentiary basis to disregard the relevant document. Assertions that the Registrar should drop the objection merely because the Registrar cannot establish the relevant dates are of no weight in these circumstances – because the owner has the relevant knowledge.
It should be noted that the Registrar will not invoke regulation 11.28(a) to require the owner to provide the relevant evidence. Rather the relevant objection will be maintained until such time as the owner provides the necessary evidence.
It should additionally be noted that (in the absence of explanation) refusal to provide the relevant evidence may lead to the inference that the owner has no real basis to challenge the alleged publication date.
- If the web site was owned by a third party, but the date can be readily challenged because it shows images of products made by the owner that were only manufactured after a later date, the owner should provide a relevant declaration identifying the product and when it was first released – thereby providing a sound evidentiary basis to disregard the relevant document. [The presence of a declaration will also assist third parties subsequently assessing the validity of the Design.]
- If the web site was owned by a third party, and the owner has no ready means of establishing the date is incorrect (but believes it was published after the relevant priority date) they may make relevant assertions about the lack of evidence of the publication date. In this scenario the objection will usually not be maintained.
Note: This issue is purely an evidentiary issue, with the onus falling on the Registrar [or on the person requesting examination, in the context of a hearing under s.67(3)]. It should be noted that the ground of revocation of s.93(3)(d) – obtaining registration by fraud, false suggestion or misrepresentation – is likely limited to actions of the owner prior to Registration, and not during examination. However, where an objection is overcome merely on the basis of assertion, it is appropriate for the examiner to record in the file the fact that examination was concluded expressly on the basis of the assertion or representation made by the owner or their attorney.