6.3. Representations: Formal compliance

Legislative requirements

The design application needs to include at least one representation of the design(s) applied for. Representations must ‘substantially comply’ with the formal requirements in the Formal Requirements Instrument; see s 39(2)(aa) and s ​​​​​40(2)(c) of the Designs Act. These reference a written instrument which is determined under s 149A. Design applications which are filed on or after 10 March 2022 must comply with the requirements of this instrument. In summary, these requirements are that the design and its representations must be clear and consistent and "substantial compliance" is interpreted in that light. 

Where the design application was filed before 10 March 2022, it must comply with the requirements of sch 2 of the Designs Regulations. Such applications must “substantially comply” with these requirements.  

The formalities officer will check:

• the representations against the formalities checks in the regulations.
• the representations against the formal requirements in either sch 2 of the Designs Regulations or the requirements in the Formal Requirements Instrument. These requirements are mainly targeted at representations, with their purpose being to achieve clarity and certainty about the design(s) being applied for
• whether the representations for each identified design (i.e. each design given a number when the application was lodged) show more than one design, see 4.05(1)(g). If they do show further designs, we issue a formalities notice (s 41).

The applicant then has a chance to correct any problems by amending the application (s 28).​​​​​​​

Substantial compliance

The general test is to consider whether any non-compliance is a matter of substance. We can still consider an application to be substantially compliant if:

• the specific detail that does not meet formal requirements is of low importance or seriousness
• it is clear from the application as a whole that the representations show a complying design.

​​​​For this level of confidence, the contents and meaning of the representations must be obvious and clear. If others are likely to be confused by them, the requirements may not be met.

If in doubt, the formalities officer will likely issue a formalities notice so that any uncertainty can be cleared up before registration (i.e. before it is too late to amend the application). The applicant’s response will often be enough to clarify the issue.

It is important to make a comprehensive and clear record of the specific reasons for determining that an application is substantially compliant. This should include identifying the specific detail that does not meet requirements, and why the application as a whole has been deemed to substantially comply. This determination is best only applied where it is very clear. It is important to remember that clarity is key factor when considering this matter.

Scandalous material

The representations cannot show anything that could reasonably be considered scandalous. This requirement is outside the "substantial compliance" threshold and strict compliance is required. 

For applications made on or after 10 March 2022, scandalous material would make the application not satisfy reg 4.04(1)(aa) of the Designs Regulations.

For applications made before 10 March 2022, scandalous material would make the application not satisfy s 8 in sch 2 of the Designs Regulations.

Regardless, any such design would also likely trigger a section 43 refusal to register the application.

Amendment

To respond to any issues with the representations or for other reasons, the applicant can request the Registrar to amend (delete, replace or add) representations under s 28. This only applies before registration and it may only be allowable if the amendment would not alter the scope of the application (s 28(3)). The amendment itself can be something which makes the application "substantially comply" with relevant requirements.

Note that there are other requirements that amendments must meet. An amendment is likely not allowable if it would introduce new material that has not already been disclosed in the original application and it changes the scope. Please see Part 22.2 regarding amendments to an application for more information about the additional requirements a proposed representation must meet.

Formalities issues after registration

Compliance of the originally filed representations with the formality requirements is not an issue that can be raised during examination.