D10.1 Overview

Date Published

The Designs Act 2003 (Cth) provides four amendment mechanisms:

  1. Section 28, together with reg 3.09. – Amending a design application before registration. This most frequently arises consequential to the formality check under s.41. The only limitation is that the amendment must not alter the scope of the application by the inclusion of new matter.
  2. Section 66, together with reg 5.05. – Amending the registration during examination. The amendment must not increase the scope of the design registration, and it must not alter the scope of the application by the inclusion of new matter.
  3. Section 120 – Rectification of the Register ordered by a court (which could include amendments).
  4. Regulation 9.05 – Correcting clerical errors and obvious mistakes on the Register (as well as name and address changes).

This part of the manual is concerned with amendments under s 28 and s 66 of the Act. Amendments under reg 9.05 are dealt with in D12.4. Court ordered rectifications are dealt with in D12.5.

The ALRC report contains no detailed discussion on amendments – Recommendation 83 (accepted by the Government) merely recommended the retention of s 22B of the Designs Act 1906 (Cth).

Section 22B contained a combined form of the concepts of increasing the scope of the application for registration, and of including matter not in substance disclosed. The 2003 Act has separated these concepts into discrete criteria - with only the ‘in substance disclosed’ criterion applying before registration.

The limited precedent on s 22B of the 1906 Act must therefore be considered with care. Some assistance may be obtained from precedence under the amendment provisions of the Patents Act 1990 (Cth), where these concepts have been traditionally treated separately – although care is required, given the differences in how the monopoly right is obtained under the different Acts.

The allowability of amendments to a design may involve a determination of the disclosure of the design before amendment, and the effect of the amendment on the scope of the design. Since such amendments directly affect the s 19 considerations of distinctiveness, consistency requires the determination of the disclosure before amendment, and the effect of the amendment on the scope of the design, be assessed by reference to the standard of the informed user. See D09.9.2

Where the examiner considers an amendment is not allowable because it increases the scope, includes matter not in substance disclosed (or is not a clerical error or obvious mistake), the question of ‘burden of proof’ may arise. Where the examiner raises an objection based on s 66(6), the owner needs to provide material sufficient to justify the administrative exercise by the Registrar or her delegate, of the power to amend the Registration. That might be by way of persuasive argument, or declaratory evidence from relevant informed users. [See D09.9.4 regarding assessing such material.]

Submissions that the examiner must ‘prove’ that the amendment is contrary to the s 66(6) requirements (or mere assertions that the examiner is wrong) indicate a misunderstanding of the owner’s obligations. The owner needs to provide the Registrar with clear and convincing reasons (based on the design and any relevant supporting material) why she should exercise her power to amend the registration. Mere assertions that the examiner must prove the amendment is contrary to s 66(6), or that the ‘examiner is wrong’, do not provide the Registrar with any reason to exercise her power to amend the design.

D10.1.1  How amendments are ‘Made’

The process of making amendments under the Designs Act 2003 involves the following steps:

  1. The applicant or owner proposes amendments;
  2. The Registrar considers the amendments for allowability under the Act or regulations
  3. And if allowable and at an appropriate stage, the amendments are ‘made’ and incorporated into the relevant documents.

In the examination process, the amendments remain as ‘proposed amendments’ up until a certificate of examination is issued. It may be noted that if a third party is heard pursuant to s 67(3), the fact that the amendments still have the status of proposed amendments allows the third party to challenge the validity of those amendments (providing that would have a consequential effect on the validity of the design).

During examination, amendments are made by way of s 66. As is made clear by reg 5.03(5), further reports must consider whether grounds of objection would be removed if the Register were amended as proposed in the request. Similarly, when the examiner completes the examination, s 67(2) refers to the giving of a notice that a ground of revocation could be removed if the Register were amended as proposed. And s 67(3) provides for the actual amendment of the Register.

A request to amend may involve several individual items. For example, a change to the product name as well as a change to a representation. While an examiner may typically raise objections with respect to only some specific items of the amendments, allowance of the amendment is made with respect to the entire amendment request (as amended). In particular, there is no scope for an examiner to selectively allow some amendments and not others. Nor (for amendments under s 28 or reg 9.05) is there scope to make some of the requested amendments, while arguing over the allowability of others.