- 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
The extensions of time provisions in the Designs Act 2003 (Cth) are provided by s 137 and reg 11.13. Section 137 is universally applicable. Section 137 also applies to applications proceeding under the preserved provisions of the Designs Act 1906 (Cth) (1906 Act) – see s 153(2).
The provisions of s 137 are essentially the same as s 223 of the Patents Act 1990 (Cth), and s 224 of the Trade Marks Act 1995 (Cth). Accordingly, the precedent under those Acts provides relevant precedent for corresponding provisions of s 137 of the Designs Act 2003.
When considering precedent under the Trade Marks Act 1995, regard must be had to the effect of the exclusions from an extension of time set out in reg 21.28 of that Act.
The Designs Act 2003 provides for the possibility of excluding an extension of time being granted for certain matters, by way of the definition of ‘relevant act’ at the end of s 137. Currently (2020) no actions have been prescribed for that purpose. Accordingly, any time period set in the Act or Regulations for the doing of an act is capable of being extended.
D11.1.1 Calculating the expiration of a Time Period under the Designs Act
Section 137 applies when an act required to be done within a certain time is not, or cannot be, done within that time. The ‘rules’ about how to calculate that period are as follows:
1. There must be a relevant period recognized in the Act that can be extended. Thus, the time for filing a convention application is capable of being extended, but there is no relevant period for filing a first-instance application.
Note: An extension of time does not change the date on which the relevant action occurred. An extension of time merely extends a relevant period to the actual date of the relevant action, thereby maintaining the associated benefit.
2. The basis for calculating the end of a period is primarily governed by s.36(1) of the Acts Interpretation Act 1901 (Cth). Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event.
Importantly, this does not reset the date of the period for the purpose of calculating subsequent periods.
3. The basic rule for calculating a period in months is that the due date is a date having the same day number. For example, one month from the ‘x’ of March is the ‘x’ of April. Where the start date is the last day of a month, there may be no corresponding day number in the future month. In this case the relevant day is the last day of the future month.
When the start date is the last day of a month, the requirement that the period is exclusive of the given day is particularly relevant. The approach is:
- Add 1 to the starting date;
- identify the future date having the corresponding day number,
- subtract 1 day.
- 1 month from the 31 March is 30 April. [31 March + 1 day = 1 April. 1 April + 1 month = 1 May. 1 May less 1 day = 30 April].
- Similarly, 1 year from 29 February is 28 February. [29 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 28 February].
- Conversely, 1 year from 28 February in a non-leap year is 29 February in a leap year. [28 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 29 February].
[See the definition of Month in the Acts Interpretation Act 1901].
4. Where a period expires on a day where IP Australia (or any of its sub-offices) is not open for business, the calculation of the last day when the action can be done is governed by s 136A and regs 11.32 and 11.33 – and any declarations under s 136A(2)(b) [which are published in the AOJD]. Section 36(2) of Acts Interpretation Act 1901 does not apply [s 136A(6)].
This provision has the following effects:
- If IP Australia is closed for business at all locations, the action can be done on the first subsequent day when IP Australia is open for business; and
- If IP Australia is closed for business at some (only) of its locations, the action can be done at that location on the first subsequent day when IP Australia is open for business at that location. If the action is done on a subsequent day at a location which was open on the relevant day, the action will be out of time.
Note: If the action is done by electronic means, the critical consideration is whether IP Australia in Canberra was open for business on the relevant day. Where IP Australia in Canberra was open for business on that day but a State Office was closed, an action undertaken the next day at that State Office via electronic means (such as fax) does not obtain the benefit of the closure at that State Office, and will be out of time.
Where the relevant action to be done within the time period is an action by the Registrar, it is the location of the person exercising the Registrar’s powers that is relevant. This is very important in examination. When the final day for completion of examination falls on a day that is not a holiday in Canberra, the fact that it is a holiday in another location does not affect when the design ceases for failure to complete examination. That is, the owner cannot rely on the local public holiday to file a response the following day.