D10.2 Ambit of s.28 amendments

Date Published

Amendments under s 28 of the Designs Act 2003 (Cth) occur prior to registration. The amendments can relate to any document making up the application. That is, amendments may be made to details in the request form (such as the details of the priority document, details of designers and owners) as well as details relating to the actual design – such as the product identification and the representations.

However, while s 28 amendments are largely unconstrained, there are in fact some significant constraints:

  • Amendments to any document that results in the definition of the design changing are only allowable if they do not include matter not in substance disclosed in the original application, representations or other documents;
  • Amendments to documents filed by other persons are not allowable. While such documents are held on the file of the design application, they are not documents of the ‘design application’ as set out in s 21. [For example, documents filed under s 29 by a third party are not amendable by the applicant of record].
  • Amending a document such as the priority document, or a declaration or affidavit filed by the owner, has the effect of voiding the authenticity of the document. As a result, if the document had been filed to meet a purpose, an amendment of the document would likely mean that purpose was no longer fulfilled. [Generally speaking, where an amendment of an authenticated document is desired, an authenticated amended document should be filed.]

D10.2.1  Time for making S.28 amendments

Amendments under s 28 can be made to an application at any time. Importantly, an application does not cease to be an application when a design disclosed in the application is registered – which means (at least in principle) amendments to a design application may be made after some or all the designs have been registered – see Reckitt Benckiser Inc [2008] ADO 1, at paras [14]-[16]. However, as stated in para [16] of that decision:

' … while it is possible to amend the application under s.28 after registration – that doesn’t mean that s.28 amendments after registration affect the monopoly rights in the Design. The primary rights of a Design are established by the entry in the Register. And the Register can only be amended by way of s.66 and/or regulation 9.05 [with their associated limitations on the amendment.] An amendment of the design application after grant does not amend the Register. Nor does it enliven a basis to amend the Register to align with the amended application (for example, by asserting a clerical error or obvious mistake by reason of the consequential inconsistency between the application and the Register); any amendment to the Register must of itself meet the conditions of s.66 or reg. 9.05. That is, post registration amendments of the application in relation to matters which are entered on the Register prima facie have no purpose – and consequently discretion might apply to refuse such amendments on the basis of lack of purpose.'

D10.2.2 Amending a Statement of Newness and Distinctiveness

The Statement of Newness and Distinctiveness is a statement that only exists on the application file. It is not included on the register – regulation 9.01(d). Accordingly, amendments to that statement are by way of s 28.

However, in defining the Statement of Newness and Distinctiveness, s 19(2)(b) refers to the existence of a statement in the design application in the past tense. This was discussed in Reckitt Benckiser Inc [2008] ADO 1, where it was concluded:

that the definition of the statement of newness and distinctiveness in s 19(2) is a reference to such a statement as in existence immediately prior to registration.

Accordingly, while the statement can be amended (including added or deleted) under s 28 prior to registration, any amendment under s 28 to the text that makes up the statement after registration does not have the effect of amending that statement – rather it creates new text that serves no purpose, and any such amendment should be rejected for lack of purpose.

D10.2.3 ‘Voluntary’ requests to amend under s 28

The scope of amendment under s 28 is largely unfettered – the only restriction being the prohibition against including new subject matter [s 28(3)].

The majority of requests to amend under s 28 will be for the purpose of correcting deficiencies identified in a formalities report under s 41. However, s 28 is not limited to being in response to such a report – the applicant can request amendment of their own volition. Two pertinent examples of ‘voluntary’ amendments are requests to:

  • amend the Statement of Newness and Distinctiveness to better identify particular features of the design;
  • delete a request for registration or publication

In either case, the amendment can be effected providing the processing of the application has not progressed past registration or publication (as appropriate). An owner wishing to make such an amendment has uncertain knowledge about when registration or publication might occur (unless they have received a formalities report and have not responded to it). In those circumstances the owner should initially contact the Customer Service Centre to enquire as to the status of their application and confirm whether an amendment may be made before an application is published and potentially registered. It should be noted that registration of the design while a voluntary s 28 amendment is pending is not ultra vires – see Reckitt Benckiser Inc [2008] ADO 1, paras [21] and [22].