- 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
D14.4 Production of documents under s.61(2)
Sec 61(1)(a) of the Designs Act provides that certain documents must not be published or open to public inspection. Sec 61(1)(b) provides that such documents:
"are not liable to be inspected or produced before the Registrar or in a legal proceeding unless the Registrar, court, or any person having power to order inspection or production, directs that the inspection or production be allowed."
These provisions are identical to s.56(1) of the Patents Act 1990. These provisions are rarely invoked, and the following is based on the Patent Office Manual of Practice and Procedure.
The operation of these provisions will typically arise in two circumstances:
- Proceedings which have arisen before the design has been registered (such as a dispute under s.28) – such that the relevant material is not open to public inspection under s.60; and
- Proceedings (such as s.51, 67(3) or 137) where material has been produced following a Notice to produce under s.127(1)(c), and the Registrar has taken steps to protect the confidentiality of some or all of the produced material under s.127(2).
D14.4.1 Powers of the Courts
The power of a court under sec 61(1)(b) is exercised by means of service on the Registrar of a subpoena ordering the production of specific documents. Any such subpoena needs to be handled promptly and correctly; it should be passed on by hand to a person in an area with relevant legal responsibilities in IP Australia. Note that it has been known for Commonwealth Officials to be dealt with at a personal level for contempt of court as a result of inappropriate handling of subpoenas.
D14.4.2 Powers of the Registrar
The powers of the Registrar are concerned with providing for inspection before him or her of documents which, pursuant to sec 61(1)(a) are not published or OPI.
Requests for such inspection will most likely arise in relation to:
- ownership disputes under s.29 (or possibly s.30);
- sec 137 requests for an extension of time (before registration); and
- financial disputes (but it is likely that such disputes will be before a court, and the relevant documents the subject of a subpoena)
Depending on the person making, and the nature of, the request - the person making the request, and any person having proprietary rights in the documents concerned (whether those rights are current or retrospective), may be entitled to be heard before the Registrar. Thus any requests under sec 61(1)(b) must be forwarded to the Trade Marks Hearing section for consideration.
There have been very few requests under sec 61(1)(b) of the Designs Act. or sec 56(1)(b) of the Patents Act 1990, or the equivalent provision under the Patents Act 1952 [sec 55(1)(e)]. However sec 55(1)(e) was judicially interpreted in Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), where Fullagar J. said:
"In s.55(1)(e) I consider that the words "before the Commissioner or in a legal proceeding" govern not only the preceding word "produced" but also the preceding word "inspected". The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection "in a legal proceeding". It may be - and it is unnecessary to decide - that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, 'live' legal proceedings."
- but note that this quote refers largely to the powers of a Court.
A request to the Commissioner of Patents under sec 55(1)(e) of the Patents Act 1952, and how it was dealt with, is referred to in Magee v Farrell (1986) AIPC 90-296.
Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc, (1998) AIPC 91-434.
D14.4.4 Who Access is Granted To
Where there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality. An example of a draft undertaking is given in D14.4 Annex A. However the appropriateness of this must be assessed on the merits of each individual case.
Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert. In certain circumstances, such as ownership disputes, the other party would be granted restricted access if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality. (See Davies v Eli Lilly & Co. (1987) 1 All ER 801).
Access to a not-OPI file will only be given to an independent person. This creates a fundamental difficulty for an unrepresented party seeking access. However in the case of an ownership dispute under s.28 an appropriate solution is to allow the design to proceed to grant - such that all documents on the file become publicly available – and convert the s.28 proceedings to proceedings under s.51. [See Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust  ADO 7, as explained in paras 2 and 3.]
Of course, if the parties can mutually agree to access, documents can be exchanged outside the Designs Act without involving the Registrar.
Where the Registrar has some concerns about releasing the documents and the parties cannot agree to access, it may be appropriate to follow the process of Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088. In such cases, if access to unpublished designs is sought and granted it may be on the following basis:
- the person seeking access must provide the Registrar with a statement of what they allege is their design
- a designs examiner, or agreed third party, will compare the alleged design with the designs contained in the application and report whether the alleged design is disclosed in the unpublished design application
- upon appropriate undertakings as regard confidentiality being made, the report will be given to the person seeking access, and the design applicant (or their respective legal representatives).
See Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088.
In situations where there is a real issue of ownership, and the relevant application is not published, there may be serious difficulties for the parties in preparing their evidence. While Registrar may consider it appropriate to allow inspection of the file (including evidence filed by the other party) by the legal representatives, it is unlikely that the Registrar will allow inspection under sec.61(1)(b) by the actual party of any material that discloses the technical content of the application. Nor is the Registrar likely to approve communication of that technical content by the legal representative to the actual party. However, this difficulty can be avoided if the parties can reach agreement between themselves to give each other their relevant evidence, without the direct involvement of the Registrar.
D14.4.5 Where Inspection is to Take Place
Normally inspection can take place at the Designs Office in Canberra, or at any of the State Offices. However, if s.127(2) is invoked with respect to produced material, particularly if documents sought for inspection are particularly voluminous, the Registrar may require that inspection is to take place at the Designs Office in Canberra.
D14.4 Annex A Draft Undertaking for Access to view Documents under Section 61(1)(b)
In the matter of:
Design application no:
in the name of and a <request> under section by
I ……………………………………………….. <name> apply to the Registrar for access to inspect certain documents under section 61(1)(b) of the Designs Act 2003.
These documents are: .
I undertake that I will treat those documents and the information contained therein as confidential and will not disclose the information contained therein to any other person until I am satisfied that they have been granted access by the Commissioner to inspect that material. I also undertake to only use the information contained in the documents for the purposes of the above <request/opposition> under section