D12.4 Correction of the Register - Regulation 9.05

Date Published

D12.4.1 Overview

This provision allows for amendment of an entry in the Register to correct a clerical error or obvious mistake, and to correct a name or address that has been changed.

This regulation is limited to clerical errors and obvious mistakes. More substantive amendments where there is no clerical error or obvious mistake, can only occur by way of s 28 (pre-registration), s 66 (during examination), or a court order for rectification of the Register under s 120 of the Designs Act 2003 (Cth). Amendments under s28 and s 66 are discussed in Part 2, D10.

D12.4.2 Clerical error or obvious mistake - Regulation 9.05(1) and (2)(a)

A clerical error is an error that arises in the process of transcription, whereby something other than what was intended is entered on the Register. Where the error is said to have occurred in documents submitted to the Registrar, the owner will need to provide relevant evidence to establish the intention at the time the documents were prepared, with some indication as to why the submitted documents did not reflect that intention. The evidence needs to clearly demonstrate the existence of the intention – and not a subsequent change of mind. Because of this, assuming that there is a clerical error, the Registrar will be more likely to exercise their discretion under reg 9.05 (2) where the Owner has demonstrated the intention and other facts via a declaration.

An obvious mistake is an error for which both the existence, and the correction, is obvious on the face of the Register. If it is necessary to analyze other documents to recognize the existence of a mistake, or to ascertain the correction, then the mistake is not an obvious mistake and cannot be rectified as an “obvious mistake” under this regulation. The evidence needs to clearly demonstrate the existence of the intention – and not a subsequent change of mind. Because of this, again, assuming that there is an obvious mistake, the Registrar will be more likely to exercise their discretion under reg 9.05 (2) where the Owner has demonstrated the intention and other facts via a declaration.

Regulation 9.05(1) is used when there has been no error on the part of the owner, but rather an error by the office, e.g. where information entered on the Register is incorrectly extracted from the application. When the error is solely the responsibility of the owner or its agents, then reg 9.05(2) applies.

Subregulation (3) allows the Registrar to seek comments from some or all persons entered on the Register as having an interest in the design. The Registrar will not do this as a matter of course, but may if the nature of the amendment sought might affect the interest of such persons.

Subregulation (4) requires the Registrar to advertise the amendment for opposition purposes if the amendment would materially alter the meaning or scope of the entry in the register. Generally speaking, name and address changes, and corrections of simple typographical errors, would not materially alter the meaning or scope of the entry in the Register. In contrast, any correction that could affect upon the scope or validity of the design (e.g. changing the number or date of a priority application) materially alters the meaning or scope of the entry in the Register and must be advertised. In this regard, submissions from the owner that the amendment need not be advertised should be given little weight per se; indeed, the mere fact that an owner does not want the amendment advertised will typically be a strong indication that the amendment does in fact alter the meaning or scope of the entry in some material manner – and thus must be advertised.

D12.4.3 Adding a new Registered Owner

In principle, a request can be made under reg 9.05(2) to insert the name of a new owner, asserting that a person's name was omitted as a result of a clerical error or obvious mistake – on the basis that it was always the intention to include that person as the owner.

Any request to amend the Register to insert new owners on the basis of an alleged clerical error or obvious mistake must be supported by clear and convincing evidence of the existence of that clerical error or mistake. That evidence would need to show that the individual concerned was known at the relevant time, and what the clerical error or obvious mistake was that resulted in that individual’s name being omitted. Mere assertions (even in declarations) such as “it was always the intention...” provide insufficient basis to be satisfied of the existence of a relevant clerical error or obvious mistake. Where there is inadequate evidence of the existence of an error or mistake, the examiner should object that the existence of a clerical error or obvious mistake has not been established, and draw the owner’s attention to the mechanism of s 120 of the Act. Note that the likely effect of such a correction is to convert a wholly invalid design into a valid design, and accordingly the Registrar will only make such a correction on the basis of clear and convincing evidence.

It should be noted that if the Registrar amends the owner under reg 9.05(2) on the basis of a clerical error or obvious mistake, it is not certain that this will overcome the invalidity grounds of s 93(3)(b) and (c).

Situations can arise where the parties associated with the design realise after its registration that another person (not being a creator of the design) should desirably have been included as a co-applicant as a part-assignee. Such situations are properly dealt with by way of a post-grant recording of an assignment of a part interest in the design; amendment of the Register on the basis of a clerical error is not appropriate.

Requests filed by persons other than the owner should be treated with caution, and only be acted upon after informing the registered owner under reg 9.05(3).

D12.4.4 Adding a new Designer

Situations also arise where after registration the owner wishes to identify further designers. This typically arises where the owner is a large company and has difficulty in properly identifying all designers - particularly if the design is the result of a major team project. In situations where the added designers are employees of the applicant, the addition of extra designers will not normally raise any concerns regarding s 93(3) - usually the applicant company will be the assignee of the design from the extra designers as a result of their employment, and there will be no change in the name of the registered owner. If, however, there is a request to add the name of the extra designer as an extra owner, the ground of s 93(3)(c) is applicable. In this situation, submissions to the effect that the existence of the extra creator/owner was not known prior to the completion of a “due diligence” investigation does not establish the existence of a relevant clerical error that would justify changing the owner to include the extra owner. [See D12.3.3]

Requests filed by persons other than the owner should be treated with caution, and only be acted upon after informing the registered owner under reg 9.05(3).

D12.4.5 Change the name or address - Regulation 9.05(2)(b)

Where there is a change in the name or address of the owner, the Register is amended under this provision to record the change. As such amendments do not change the identity of the owner, the Registrar would not normally notify persons entered on the register as having an interest, nor advertise the amendment for opposition purposes.

Any changes in the person of the owner must be dealt with as an assignment under s 114. In situations where it is not clear whether the situation is an assignment or a name change, the Registrar will process the request as set out in para D12.2.2.4 (Mergers vis à vis Assignments).