22.2.2. Amending an application: Amendments that are not allowable

An applicant cannot amend an application if the amendment will alter the scope of the application by including matter that was not in the original application, representations or other documents (s 28(3)).

Whether an amendment changes the scope of the application is judged on a case-by-case basis.

Amending the product name

The scope of the application might be changed if the applicant wants to change the product name to include a product or component that is not shown in the representations.

See the ‘Espresso Coffee machine’ example under Amendments that are allowable.

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Amending the representations

The scope of the application might be changed if the applicant wants to submit new representations that are completely different from the original ones. Where the design in the new representations is not at all similar to the original design, a formalities notice should be sent to the applicant because the scope of the application would clearly be altered.

Examples​​​​​​​

• The original representations were photocopied photographs that appear as a dark mass. It is impossible to determine what the design is. The applicant cannot substitute new representations because the scope may be being altered – it cannot be seen whether the new representations are completely different from the old ones.
• The original application included the product name backpack and representations showing a backpack. The new representations show a backpack and drink bottle.

Amending documents filed by another person

The applicant cannot amend documents that were filed by anyone else (e.g. documents filed by a third party). Even though those documents are on the application file, they are not part of the ‘design application’ (s 21).

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Amending a priority document or a declaration or affidavit

Priority documents, declarations and affidavits cannot be amended. Generally if an owner wants to amend an authenticated document, they will need to submit an authenticated amended document.