If an application contains more designs than the applicant has stated on the form and has paid for, it is said to include ‘further designs’ (see reg 1.04). We cannot accept for registration an application that contains further designs.

Identifying further designs

As part of the formalities assessment, we must ensure that representations for each identified design do not show more than one design. Additionally, the information in the application needs to match the design(s) applied (and paid) for. This includes assessing whether there is consistency between the product name and the representations, and between the representations themselves.

Representations must be consistent and not include anything in one representation that is not indicated or implied in another. Generally ‘variations’ and ‘alternative embodiments’ are too different to be considered one design and therefore should be identified as further designs. However, this has to be judged on a case-by-case basis.

Example 1

A single application is filed which includes the product name bottle, a single design fee and the following representations:

In this example a further design is applicable, as colour is a distinguishing visual feature. The applicant has applied for both red and green bottle designs. On this basis we must notify the applicant that there are further designs and give them an opportunity to respond.

Example 2 (201816709, Aristocrat Technologies Australia Pty Limited [2021] ADO 1)

A single design application was filed which included the product name A bank of gaming machines. See the below representations.

In this decision it was determined that four individual gaming machines (and therefore product designs) are seen in the representations, taking into account that no physical connection between the machines is displayed. The Hearing Officer, at 35, stated that three further designs applied.

Dealing with further designs

If the formalities officer finds that an application contains further designs, they will notify the applicant. The formalities notice may also include information about the visual differences between the representations that have resulted in the determination of further designs. This is done on a case-by-case basis, depending on the extent of the visual differences and further designs and what the differences are.

To correct the application, the applicant can choose between:

removing the further design(s)
combining all the designs into a multiple application.

Alternatively, the applicant can respond to the formalities notice (in writing) arguing against the finding of further designs. We are required to consider this response (s 42(3)). If we agree with the response and are satisfied that there are not further designs and there are no other issues, we must register the design (s 42(4)). If we disagree and continue to maintain the issue, we provide a further formalities notice (s 42(5)(b)).

The applicant can also choose to do nothing, in which case the application will lapse.

Removal

To remove the further design(s), the applicant can either:

amend the application under s 28 to exclude the further design(s) (s 23) – they can then submit a new application for the excluded design(s)
lodge a written request to withdraw the further design(s).

Multiple application

Alternatively, the applicant may be able to keep the further design(s) in the same submitted application by paying additional fees. This creates a multiple application.

The application needs to meet the requirements of s 22(1)(c) or (d). See ‘Applications for more than one design’ under Types of applications.