D10.3 Ambit of s.66 amendments

Section 66 amendments are only available in the course of examination. These amendments are limited to matters relating to the registrability of the design. This follows from the s 65(2) limitation of the grounds of revocation as considered under the examination provisions (Chapter 5 Part 3) to:

• the design is not a registrable design [s 65(2)(a)]
• the design should not have been registered because of s 43 [reg 5.02]

That is, amendments under s 66 are only available in respect of matters affecting newness and distinctiveness [s 15(1)], and the matters set out in s 43.

Consequently, amendments to bibliographic-type information associated with the design registration – such as the name of the designer or owner – are outside the scope of amendments under s 66. Similarly amendments to other details entered on the register – such as licences, assignments, or other interests – are not amendable under s 66. [Changes in those matters must be dealt with under regs 9.03 or 9.05 – See Part D12 of this manual.]

Under s 66, a pre-requisite for the making of amendments is the fact of the Registrar being satisfied that a ground of revocation made out. Where she is so satisfied, the Registrar must inform the owner [s 66(2)], and typically amendments under s.66 will be filed in response to that notification.

There may be circumstances where the owner believes that a ground of revocation may exist on the basis of information not before the Registrar, and wants to make relevant amendments during examination – irrespective of whether the examiner raises the particular ground of objection. When assessing whether amendments may be filed under s 66(3):

• The precondition is the Registrar’s satisfaction that a ground of revocation exists. While s 66(2) requires notification to be given, the giving of that notification is not a precondition for s 66(3).
• Where an owner indicates they are making amendments to avoid a ground of objection arising on an unspecified basis, it is appropriate for the Registrar to proceed on an implied consent basis that there is a ground of revocation that has been made out for the purposes of s 66(1). [Indeed, public interest issues would preclude her from rejecting an amendment that would otherwise narrow the scope of the monopoly.]
• Any amendment sought must nevertheless fall within the ambit of s 66. That is, it must be limited to issues of newness and distinctiveness, and s 43 matters. As noted above, amendment of (for example) the name of the owner or designer is not allowable under s 66.

Consequently, when an owner seeks amendments under s 66 for the generic purpose of overcoming a ground of revocation, the Registrar will not assess the amendments against the grounds of revocation raised in the last examination report. Rather, the Registrar will proceed on the basis that there is a relevant ground of revocation, and assess the amendments in accordance with the requirements of s 66(6).