22.2.1. Amending an application: Amendments that are allowable

As long as the scope of the application is not altered, the applicant can:

• change the name of the applicant
• change the name of the owner of the design
• change the residential address or address for service
• change the product name
• change the statement of newness and distinctiveness
• add convention details
• give excluded design details
• address deficiencies that prevent the design from being registered
• correct an error in the representations
• correct an error in the wording.

Assessing whether the scope of the application would be altered includes determining whether the proposed amendments relate to the design being applied for, and whether they introduce matter (visual features) that was not in substance disclosed in the original application.

The limitation that new matter cannot be introduced applies only to matter that relates to the design. For example, an amendment request to include additional designer details would be allowable s 28(3) as this matter does not contribute to what the design being applied for is.

Amending the name of the applicant

Generally the name of the applicant can be changed. But if the amendment would change the name of the applicant substantially and the rights of the design have not been assigned (s 30), the applicant must submit a statutory declaration and any other evidence to explain how the error was made and why the name should be changed.

The officer dealing with the amendment must be satisfied that the reasons the applicant gives on the statutory declaration are acceptable and the amendment is warranted.

If the application is for more than one design, the officer must check that the applicant name is the same for all of the designs in the application.

Amending the name of the owner

The name of the owner of the design can be changed as long as there has been a genuine error or the legal name of the same owner entity has changed. Otherwise, an assignment would be required.

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Amending the residential address and address for service

Applicants can amend the residential address on the application.

​​​​​​​Usually applicants can amend the address for service. But the officer dealing with the amendment must take care that there is no conflict of interest – for example, if there are 2 addresses for service for the same application, it might indicate that there is a problem. The officer will need to clarify the situation before accepting the amendment.

Examples​​​​​​​

• An attorney asks for the address for service to be amended from another attorney firm to theirs. But IP Australia is also receiving correspondence from the previous attorney. Both claim to be the address for service. We need to ask the attorneys to agree on what the address for service is.
• IP Australia receives correspondence asking that the address for service be amended. Shortly after, we receive another request along with a copy of a will naming the applicant’s wife as the beneficiary. Legally the applicant’s wife is entitled to be the owner and therefore her amendment is allowable. The other request is from the applicant’s mother, who is not entitled to be the owner or agent.

Amending the product name

The formalities officer may ask the applicant to amend the original product name if it does not meet product name requirements – for example, to amend the product name ‘Textile article’ to ‘Short sleeved shirt’.

The product name cannot be changed if it will alter the scope of the application.

Example (Design 202110049)

The product name is ‘Espresso Coffee machine’. The representation show a standard coffee machine:​​​​​​​

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There is a request to amend the representations to include a coffee machine with integrated milk frother and amend the product name accordingly. The request includes matter not in substance disclosed, resulting in an unacceptable altering of the scope of the application.

However:

• If the product name included in the original application was ‘Coffee machine with milk frother’ and the representations did not include the frother, a request to amend the representations to include this could be acceptable on the basis that this detail was in substance disclosed in the application (not in the representations but in the application form).
• If the representations originally disclosed the matter that is the subject of the requested product name amendment, this type of amendment request may be allowable. For example, a request to amend the product name ‘Coffee machine’ to ‘Coffee machine with milk frother’ would be allowable on the basis that representation(s) in the original application clearly disclose the milk frother.

Amending the statement of newness and distinctiveness

An owner may want to amend their statement of newness and distinctiveness (SoND) to better identify particular features of their design. They can do this before the design is registered (s 28).

Once the design is registered, the owner cannot amend their SoND.

They cannot use the amendment process under s 28 because that only applies pre-registration.

They cannot use the amendment process under s 66 because that applies to requests to amend the Register. The SoND is not on the Register. The Register records that a SoND was part of the application, but it does not include the statement itself (s 111, reg 9.01(d)).

The SoND is a statement as at the time of registration. If it is altered after registration, it will no longer be a statement as at the time of registration. Therefore such amendments are not valid (Reckitt Benckiser Inc [2008] ADO 1).

Amending an application to add convention details

The applicant can amend an application to claim convention priority. This type of request is not subject to the s 28(3) limitations.

Amendments to exclude designs

An applicant can amend their application to exclude (remove) one or more of the designs that were filed in it (s 28).

Amending representations

The formalities officer may ask the applicant to amend representations that do not meet representation requirements.

Example

The application must show a design in relation to a product – that is, it must show how the design fits with the product. The applicant has submitted a graphic design (logo) to be applied to a product but has not shown where the graphic design will be placed on the product. They can amend the representation to show the placement as long as the scope of the application is not changed by introducing new material. In this case the application originally disclosed the product (a t-shirt).

Original product name: Logo to be used on a t-shirt

Original representation:

Proposed amendment to product name: Logo applied to a t-shirt

Proposed representation:

The applicant may themselves submit a request to amend representations.

Example

An amendment request is received that seeks to amend solid line detail, included as part of the original design representations, to broken line detail. This amendment would be allowable as the change does not introduce new matter. The line detail was in substance disclosed in the original application. The effect of the amendment is limited to the amount of emphasis placed on the line detail when assessing newness and distinctiveness if examination of the registered design occurs.

This type of amendment may also be requested under s 66. Whilst it may not fall foul of s 66(6)(b), it may be problematic when considering the other conditions that must be met to amend a design registration.​​​​​​​​​​​​​