2.7. Application for registration: Further designs

An application contains further designs if it includes more designs than the applicant identified and paid for. See reg 1.04.

An application containing unpaid further designs cannot be accepted for registration.

Identifying further designs

During the formalities assessment, the representations for each identified design must be examined to determine whether they show more designs than have been paid for.

The application information must also correspond with the designs identified and paid for. This includes assessing consistency:

• between the product name and the representations

• among the representations themselves.

The representations of a single design must be consistent. A representation should not show a visual feature that is neither shown nor implied in the other representations.

Variations and alternative embodiments will generally be too different to constitute one design, although each application must be assessed on its facts.

Example 1

A single application identifies the product as a bottle, includes one design fee and contains representations of a red bottle and a green bottle.

Colour is a distinguishing visual feature. The application therefore contains two bottle designs and one further design. The applicant must be notified and given an opportunity to respond.

Example 2

Aristocrat Technologies Australia Pty Limited [2021] ADO 1​​​​​​​​​​​​​​

A single design application identified the product as “A bank of gaming machines” and included representations showing four individual gaming machines.

The Hearing Officer found that the representations showed four individual products because no physical connection between the machines was depicted. Accordingly, the application contained further designs.

Dealing with further designs

If it is determined that an application contains further designs, a written notice must be issued. See s 41.

Depending on the circumstances, the written notice may identify the visual differences that led to the finding. The extent of the explanation will depend on the number and nature of the differences and further designs.

The applicant may correct the application by:

• withdrawing the further design or designs.

• paying the required fee for the further design or designs, where the resulting multiple application would comply with s 22.

• amending the application to remove the further design or designs and refile as an excluded application. The request to amend the application to remove the further design or designs must be made before refiling the subsequent excluded design application. See s 23. 

Alternatively, the applicant may respond in writing and contest the finding. The response must be considered under s 42(3).

If the response is accepted, no further designs remain and there are no other outstanding formalities issues, the design must be registered under s 42(4).

If the finding is maintained, a further formalities notice must be issued under s 42(5)(b).

If the applicant takes no action within the required period, the application lapses under s 33.

Removing further designs

The applicant may remove a further design by:

• amending the application under s 28 to exclude the design under s 23, after which a new application may be filed for the excluded design. This must be done within specific timeframes, which are listed at s 23 and reg 3.02. See also Excluded designs.

• lodging a written request to withdraw the further design. See s 32.

Converting to a multiple application

Where permitted, the applicant may retain the further designs in the original application by paying the additional application fees.

The resulting multiple application must satisfy s 22(1)(c) or s 22(1)(d). See Applications for more than one design under Types of applications under section 22.