In addition to not altering the scope of the design by the inclusion of matter not in substance originally disclosed, amendments under s 66 have the additional requirement that they ‘must not be such as to… increase the scope of the design registration’. This is to be understood in the context of s 66 being limited to addressing issues of newness, distinctiveness, and s 43 refusals (s 65(2)).

When deciding whether an amendment would increase the scope of a registration, the question to be asked is:

‘Would the amendment make anything an infringement which would not have been an infringement before the amendment?’ (the ‘Distillers Test’: The Distillers Co Ltd’s Application (1953) 70 RPC 221 at 223).’

The ‘Distillers Test’ assesses scope by considering the effect of an amendment on third parties – that is, whether the amendment could lead to a third party infringing the owner’s rights when the pre-amendment registration would not have had this effect.

The examiner assessing the amendment does not need to identify a specific known product that would be an infringement. They only need to be able to imagine a product that would not infringe pre-amendment but would infringe post-amendment.

In applying this test, it is important to recognise that the criteria for infringement utilises the test for distinctiveness (s 71). Distinctiveness is based on an assessment of overall impression (s 16(2)). An amendment that does not affect the overall impression of the design cannot change what constitutes an infringement. Consequently, the criterion to be applied is:

1. Would the amendment change the overall impression of the design?

2. If it does, could that change make something an infringement that would not have been an infringement before the amendment?

Amendments that do not increase the scope of the design registration

amending a representation to change how the design is shown – without changing the detail of the design. For example, replacing plan views with isometric views (or vice versa).
an amendment to the generic features of a product (in dotted line) that does not affect the scope of the product bearing the design, or affect the overall appearance of the product that arises as the result of the visual features (in solid line), would be allowable.

Example

Scenario A

The application originally contained both of the following controllers:

The following shows the registered controller design (left hand side) and what the owner seeks amendment to (right hand side):

The original application contains exactly what the owner wants to amend the registered controller design to. It’s likely that anything that would infringe the amended version of the design would likely be included in the original registration’s scope. Both requirements of s 66(6) are satisfied. Caution must be exercised here because there are other scenarios involving dotted lines which would not be acceptable. Whether Scenario A would overcome issues stemming from prior art is another matter - see Scenario B.

Amendments that increase the scope of the design registration

Examples

Scenario B

Registration for a cup:

The application originally contained both of the following:

The owner would not be able to amend the registration to the following, as actioning this amendment would increase the scope of the design registration. This is because designs that are currently not identical or substantially similar in overall impression to the design registration would be if the amendment occurred. Other cup designs that include a pineapple handle in an identical or substantially similar way would be infringing on the design registration (where previously they would not).

Scenario C (Invacare Corporation [2013] ADO 4)

An owner requested to change the product name ‘Wheelchair chassis’ to ‘Front frame of wheelchair chassis’. The representations showed a wheelchair chassis but did not identify a front frame. The reference to ‘front frame’ would increase the scope of the design registration by referring to a feature that is not in the representations.