- 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 rights granted to a owner by a design are personal property and like other types of proprietary rights, are capable of assignment, licensing and of devolution by operation of law (Designs Act 2003 (Cth), s 10 and s 11). Moreover the Designs Act 2003 recognizes that proprietary rights may subsist in an application before grant and that these rights may be dealt with in the same way as other proprietary rights (see s 30). This part relates to recordal of changed rights and entitlements.
It should be noted that a court can issue an order for rectification of the Register in the case of:
- an omission of an entry from the Register
- an entry wrongly made in the Register
- an error or defect in an entry in the Register, or
- an entry wrongly existing in the Register
(see s 120).
Consequently where the Registrar declines to make an amendment to, or entry in, the Register, the remedy for the relevant party is to seek rectification of the Register under s 120.
D12.1.1 Effect of Registration
A owner may deal with the design, subject only to the rights appearing on the Register (s 12(1)). However, the Register is not definitive proof of ownership of rights. Rather, as is specified by s 118(1), the Register is prima facie evidence of any particulars registered in it.
In Stack v Brisbane City Council  FCA 1279 (15 September 1999), dealing with the corresponding provision in the Patents Act, the court stated:
'38 The underlying policy of the Act is to deal with ownership of a patent by registration of the original grant and by registration of any subsequent dealings in or with the patent in the Register. The scheme is to treat the registered proprietor as the owner of the patent subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as regards title to patents: Stack v the State of Queensland (1996) 68 FCR 247 at 251-2 citing with approval Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 at 133. Registration in the Register, while prima facie evidence of any particulars registered in it (s 195) and prima facie evidence of entitlement to ownership of the patent says nothing as to the validity of the patent.
39 Disputes as to ownership of patents and interests held in or over them are to be resolved primarily, but not exclusively, in proceedings for rectification of the Register between the rival claimants to the property interests; s 192. Such proceedings assume the continued existence of the patent, with patent rights being held by those properly entered in the Register.'
The Designs Act 2003 does not set up a registration system that recognizes caveats – or any other procedure for notifying interested parties as a condition precedent to the registration of an interest. Neither does the Register provide a system of title by registration. Rather the Register is a system of Registration of interests of which the Registrar has been notified; upon the receipt of evidence sufficient to satisfy the Registrar of the existence of the interest that is to be registered, that interest must be entered in the Register.
Evidence cannot satisfy the Registrar of the existence of an interest if it is incomplete or misleading to the public. For example, if evidence in support of a request to register a license comprises a copy of a licensing agreement with the termination date blanked out, the license should not be registered; to record a license with a time limitation but no detail of the limitation would be misleading to the public.
Under s 111(3) of the Designs Act 2003, all documents filed in connection with the registration of prescribed particulars must be available for inspection at the Designs Office. Thus the Register gives a member of the public the means of access to the details of the registrations and details of any assignments, licenses, mortgages, etc.
D12.1.2 Consequence of Not Registering
Section 12 of the Designs Act 2003 provides:
'(1) The registered owner of a registered design may, subject to any rights appearing in the Register to be vested in another person, deal with the registered owner’s interest in the design as absolute owner of it, and give good discharges for any consideration for any such dealing.
(2) However, subsection (1) does not protect a person who deals with the registered owner of a registered design otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the registered owner.
(3) Equities in relation to a registered design may be enforced against the registered owner except to the prejudice of a purchaser in good faith for value. '
The 'registered owner' is defined in s 14(1) as the person who 'is entered in the Register as the registered owner of the design' at the relevant time. Thus the person registered as the registered owner may deal with the design as its absolute owner. If a prior assignment or interest has not been entered on the Register, the registered owner is still able to pass good title in, or grant a valid interest over the design – at the expense of the prior unregistered dealing.
Under equivalent provisions in the Patents Act, no attempt was made to register a prior assignment (from a trustee in bankruptcy) of an applied for patent for several years. When registration was eventually sought, the assignment could not be registered because a subsequent assignment from the registered proprietor had been registered in the mean-time. The resolution of such situations can only occur by way of an application under s 120 for rectification of the Register, where a court can determine the equitable interests in the design.
The equivalent of s 12 of the Designs Act 2003 (s 189 of the Patents Act) was discussed in 'Using Intellectual Property as a Security' Australian Intellectual Property Journal Vol 7, page 135, Aug 1996, where it was argued:
‘... s 189(1) is also relevant to conflicts between two unregistered interests. Under s 189(1), the holder of a subsequently arising interest is entitled to deal with the patent as the “absolute owner” of the patent. Although absolute owner is not defined, it presumably means free of prior interests (unless, of course, they are registered). In consequence, the subsequently created interest will always prevail over the prior unregistered interest, even if the subsequent interest does not itself ever get registered. The result is a curious perversion of the usual priority rules. Under s 189(1), priorities between successive unregistered interests in patents are resolved in favour of the last to be created interest. As a result the only way to prevent an interest in a patent being defeated by a subsequent interest, registered or unregistered, is to register the interest promptly after creation.’
The failure to record an assignment (or any other registrable matter) is at the assignee’s peril. The only remedy available to a person who fails to record their interest, if that interest is affected by the subsequent registration of another interest, is to take action before the courts to establish that they indeed have an equitable interest, and seek to have the Register rectified; the Registrar is unable to otherwise take any action to record the earlier interest.
Note that recommendation 100 of the ALRC report recommended against the Registrar having the power to make such a rectification.
Other issues resulting from non-registration are:
- a document which has not been registered is not admissible in any proceedings in proof of the title to a design or to an interest in a design unless the court or tribunal otherwise directs or the proceedings are for an order for rectification or to enforce an equity (s 119). A court has the power to admit an unregistered instrument (Martin Engineering Co v Matflo Engineering Pty Ltd (1987) AIPC 90-430)
- situations can arise where an equitable owner wishes to take infringement proceedings. As the right to take action for infringement belongs solely to the registered owner of the design, the equitable owner cannot bring the action in their name. However they can bring the action in the name of the registered owner if they provide the registered owner with appropriate indemnities (Stack v Brisbane City Council (1996) 35 IPR 296.)
D12.1.3 Knowingly or Recklessly Making False Entries
As a reflection of the importance of maintaining the integrity of the Register, s 131 of the Designs Act provides:
'(1) A person commits an offence if:
The person makes an entry, or causes as entry to be made, in the Register; and
The person knows that, or is reckless as to whether, the entry is false.
Maximum penalty: Imprisonment for 12 months'
'(2) A person commits an offence if:
The person tenders a document in evidence; and
The person knows that, or is reckless as to whether, the document falsely purports to be a copy of or extract from an entry in the Register.
Maximum penalty: Imprisonment for 12 months'
Consequently, entries in the Register should only be made on the basis of appropriate consideration and justification.
Recklessly has been held to ‘mean something more than mere negligence or inadvertence. .... means deliberately running an unjustifiable risk’ Reed (Alber E) & Co Ltd v London and Rochester Trading Co Ltd  2 Lloyd’s Rep 463. ‘Knowingly’ may refer either to an intentional untruth, or wrong fact. It probably requires a mental element, not merely that the facts are untrue. Section 131 is a penal provision of the Act. Where such a situation exists, s 131 does not provide a mechanism for rectification of the Register. However, the facts that would support an action under s 131 would almost certainly support a separate application for rectification of the Register.
Note that this provision is not limited to employees of the Designs office. It covers actions by persons generally (such as someone providing the Registrar with false or misleading information to a support a request to make an entry in the Register).