22.3. Amendments: Amending a registration

Section 66​​​​​ amendments are only available in the course of ​​​​​​​examination​​​​​​​. These amendments are limited to matters relating to the registrability of the design:

• the design is not a registrable design (s 65(2)(a));
• the design should not have been registered because of s 43​​​​​​​ (reg 5.02).

A pre-requisite is the fact of the Registrar being satisfied that a ground for revocation has been made out. This being the case, the Registrar will give the owner notice​​​​​​​ of this (s 66(2)), and the notice (report​​​​​​​) will typically identify an opportunity to remove those grounds by applying to amend their registration (s 67​​​​​​​(2)). Also, if the examiner believes a design is one that the Registrar must refuse to register​​​​​​​ (s 43), the owner is given an opportunity to amend the design under s 66.

Amendments to bibliographic-type information associated with the design registration, for example the name of the designer or owner, are not available under s 66. Amendments to other details entered on the register, for example licences, assignments, or other interests, are also not available under s 66 – changes in those matters must be dealt with under regs 9.03​​​​​​​ or ​​​​​​9.05​​​​​​.

An amendment to overcome a s 66 ground for revocation must not:

• increase​​​​​​​ the scope of the design registration (s 66(6)(a))
• alter the scope of the registration by the inclusion of matter that was not in substance disclosed in the original design application, representations or other documents (s 66(6)(b)).

It is quite rare for an amendment request to be successful and lead to a ground for revocation being withdrawn and the registration being certified.

One scenario where it may be a worthwhile option to consider is where the registration is for a common design in relation to more than one product and the ground for revocation is limited to only one of the products. An amendment request to delete the particular product from the registration may be an acceptable option. Before determining a s 66 amendment request to be successful in overcoming a ground for revocation, the examiner needs to think about what was disclosed before amendment and the effect of it on the scope of the design in the eyes of persons familiar with the product and similar products.

If a submitted amendment request is approved by an examiner, it is recorded on the Register (s 67(3)).

Technically, approved amendments are not accepted until the certificate of examination is issued, so a third party can challenge the proposed amendments if the amendments would affect the validity of the design (s 67(3)).

Owner-initiated amendments

An owner can also propose amendments during the examination. This can happen where the owner believes there is a ground for revocation of their registration and wants to make amendments even if the examiner has not raised the matter (s 66(3)).

In these cases, the Registrar can assume that there is a ground for revocation that has been made out (s 66(1)).

The Registrar will not assess the amendments against grounds for revocation raised in a previous examination report. Rather, the Registrar will proceed on the basis that there is a relevant ground for revocation and assess the amendments in accordance with the requirements of s 66(6).

Any amendment the owner seeks to make must be an allowable amendment (s 66(6)).

Several individual amendments

The owner may apply to amend several individual details – for example, the product name as well as a representation. In those cases, the examiner cannot approve some amendments and not others – the amendment is allowed or disallowed for the entire amendment request. If the examiner objects to specific items of the amendment, they must disallow the entire amendment request.​​​​​​​