Designs Examiners Manual - IP...

IP Australia

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 October 2016

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IP Australia

Designs Examiners' Manual of Practice and Procedure (2003 Act)

Updates

Part Amended Amendment Reason Updated

Part 1 - Formalities - 15. Further Designs

15.3 examples updated 20 October 2016

Part 2 - Examination - D04.3 What is a product?

4.3.7 updated to include design features and 2D common designs

20 October 2016

Part 2 - Examination -

D09.1 Overview

D09.2 Test for Newness

D09.3 Test for Distinctiveness

D09.4 The s.19 requirements

D10.1 Overview

D10.2 Ambit of s.28 amendments

D10.4 Allowabililty - inclusion of matter not in substance disclosed

D10.5 Allowability - increasing scope of the Design Registration

Updated to include some new and relevant case law.

20 October 2016

Part 1 - Formalities - 2. Entitlement

2.1 Introduction - Minor update 20 May 2016

Part 1 - Formalities - 14. Representations

14.4 Photographs - minor changes to (e) Mounting

20 May 2016

Part 2 - Examination - D01. Citation Index

Citation Index reordered by topic rather than alphabetically

21 March 2016

Part 1 - Formalities - Designs Examination Quality Standards updated to include references to IP Australia's

1 February



2

Formalities Quality Standards

Part 2 - Examination - D02 Designs Examination Quality Standards - D02 Designs Examination Quality Standards

Quality Policy and Quality Objectives. 2016

Part 2 - Examination - D03. Examination Process - D03.3 Who may request examination?

Procedure updated to add that a court can initiate examination.

20 January 2016

Part 1 - Formalities - Designs Formalities Quality Standards

Part 2 - Examination - D02 Designs Examination Quality Standards

Minor update; date of Designs Act corrected to 2003

20 October 2015


Product Quality Standards Printable Version

PQS Review- Significant changes to the wording of all attributes (including the addition of new attributes) to bring them in line with both Designs Exam and Trade Mark standards, and to account for all legislative and practice and procedure requirements.

1 July 2015



PQS Review-

• Amendment to PQS 1.3.1 and 4.3.4 to clarify what is required to be on file.

• Deletion of PQS 1.2.4.

• Amendment to PQS 2.1.1, 2.1.2, 2.1.3, 2.1.4 to change tense.

• Minor word changes to PQS 3.1, 3.1.2, 3.1.5, 3.1.6, 3.2, 3.3.1, 3.3.2, 3.3.3.

• PQS 4.3.3 to delete reference to Mainframe.

• New attributes PQS 4.3.5 and 4.3.6.

1 July 2015

Part 1 - Formalities - 17. Formalities Checking Procedure

Procedures updated to remove reference to paper files; minor corrections made to reflect current practice

12 February 2015



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Part 1 - Formalities - 16. Amendments

Procedures updated to remove reference to paper files; minor corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 15. Further Designs

Procedure updated - references to ITP removed; additional fees added; minor corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 14. Representations

Procedure updated - 14.3 and 14.5: paragraphs removed and added; 14.4: paragraph added; corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 13. Designer Name

Procedure updated - minor corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 12. Registration / Publication Request

Procedure updated - 12.3 renamed; 12.6 deleted and subsequent paragraphs renumbered; minor corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 10. Convention Details

Procedures updated - Failed Formalities Notice replaced with deficiency notice; minor corrections made to reflect current practice

12 February 2015

Part 1 - Formalities - 9. Statement of Newness and Distinctiveness

Procedure updated - 9.2 replaced entirely

12 February 2015

Part 1 - Formalities - 8. Section 43


12 February 2015

Part 1 - Formalities - 7. Product Name


12 February 2015

Part 1 - Formalities - 5. Address for Service


12 February 2015

Part 1 - Formalities - 2. Entitlement


12 February 2015

Part 1 - Formalities - 1. Procedure updated - 1.4 renamed, 12



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Classification 1.4.5 and 1.4.6 added; 1.5 and 1.7 renamed; 1.12 deleted and subsequent paragraphs renumbered; minor corrections made to reflect current practice

February 2015

Part 2 - Examination - D03 Examination Process - D03.9 Being 'satisfied'

Procedure updated - new paragraph 3.9.1.1 added

12 February 2015

Part 2 - Examination - D08 Searching -

D08 Searching

D08.1 Background, general issues renumbered as D08 and content rewritten

12 February 2015

Part 2 - Examination - D08 Searching -

D08.2 The Search Strategy

D08.3 Searching tools

D08.4 Record Keeping

Annex A - Searching Guidelines

Annex B - Search Worksheet

Procedures deleted from manual as they are internal processes only - available in the Designs Workbench

12 February 2015

Part 2 - Examination - D04 Identifying the Design - D04.4 Overall appearance, and visual features

Section D04.4.3.1 - new section added, no highlighting added;

Section D04.4.4 - Firmagroup reference updated

3 December 2014

Part 2 - Examination - D04 Identifying the Design - D04.3 What is a product?

Section D04.3.2 updated substantially 20 November 2014

Part 2 - Examination - D03 Examination Process - D03.15 3rd Party Initiated Examinations

Page replaced in its entirety; no highlighting added

20 November 2014

Part 2 - Examination - D03 Examination Process - D03.1 Overview

Updated to remove last half of last paragraph

20 November 2014

Part 1 - Formalities - 11. Excluded Design Details

Updated to remove section 11.6, add new section 11.2 and renumber following sections; section 11.1 amended to remove last two paras and replace with new one; section 11.4

20 November 2014



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amended to replace Failed Formalities Notice with deficiency notice



Minor changes to the Product Quality Standards

20 August 2014

Part 2 - Examination - D03 Examination Process - D03.13 Intention to Certify

Additional information added for 'Before examination is completed' and 'Before Certificate of Examination is issued'

28 May 2014

Part 2 - Examination - D08 Searching - Annex B - Search Worksheet

Searching Worksheet updated 28 May 2014

Part 2 - Examination - D08 Searching - Annex A - Searching Guidelines

Searching guidelines replaced in their entirety; no highlighting added

1 May 2014


Updated to change the name of the Quality Review manual to IPA QRS Manual

22 April 2014


Updated to change the name of the Quality Review manual to IPA QRS Manual

22 April 2014


Searching Worksheet updated 22 April 2014

Part 2 - Examination - D03 Examination Process - D03.17 Expedited Examination

New page added to add information about Expedited Examination

20 February 2014

Part 1 - Formalities - 6. Signature and Date

Information deleted as it is no longer required; page retained and renamed to ensure continuity of numbering of parts

20 September 2013


Worksheet updated 20 September 2013

Part 1 Formalities -

1. Classification

3. Applicant Name

Information reviewed; no changes required; effective dates updated

20 September 2013



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4. Applicant Address

5. Address for Service

7. Product Name

9. Statement of Newness and Distinctiveness

10. Convention Details

11. Excluded Design Details

12. Registration / Publication Request

13. Designer Name

14. Representations

15. Further Designs

16. Amendments

17. Formalities Checking Procedure

Part 2 -

D01. Citation Index

D03. Examination Process - All

D04. Identifying the Design - All

D05 Designs which must not be registered - s.43, Reg 4.06 - All

D06 Priority Dates - D06.1, D06.3, D06.4, D06.5

D07 Prior Art Base - All

D08 Searching - All

D09 Assessing Newness and Distinctiveness - All

D10 Amendments - All

D11 Extension of Time - s.137- All

D12 Assignment etc of Designs; the Registrar - All

D13 Ownership Disputes - All

Information reviewed; no changes required; effective dates updated

20 September 2013



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D14 Publication, File access - All

D15 Surrender of a Design - All

D16 Prohibition Orders - All


Updated to reflect updated PQS. 1 July 2013


Updated to reflect updated PQS. 1 July 2013

Part 1 - Formalities - Designs Formalities Quality Standards -

Designs Formalities Quality Standards

New Designs Formalities Standards added

6 May 2013

Part 1 - Formalities -

Designs Formalities Product Quality Standards Printable Version

New Designs Formalities Product Quality Standards printable version document added

15 April 2013

D06 Priority Dates Amendments to reflect changes due to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012:

• D06.2 Priority date - Convention Applications updated for changes

15 April 2013

D02 Designs Examination Quality Standards


Printable Word version of Designs Product Quality Standards added

3 September 2012


Designs Exam Quality Standards replaced to fix the issue with document controlled versions of the PQS.

24 August 2012

D03 Examination Process D03.16 Revocation during Examination

New section added

D03. Examination Process - updated to reflect the addition of sections D03.16

30 May 2012



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D03 Examination Process D03.15 Procedure for Third Party Examinations - new section added

D03. Examination Process - updated to reflect the addition of section D03.15

September 2011

D08 Searching Annex B - Search Worksheet - updated September 2011

D08 Searching Annex A - Searching Guidelines - new annex added.

D08 Searching - updated to reflect the change of Annex A.

D08.3 Searching tools - reference to Business Rules deleted.

D08.4 Record Keeping - updated to reflect the change of Annex A.

June 2011

D08 Searching -

Annex A - Business Rules

Annex A - Business Rules deleted. June 2011

All Manual moved from word/pdf document into electronic business manual.

July 2010

All Online Manual created. March 2010

Table of Contents

Part 1 Formalities

Chapter 1 – Classification

1.1 Introduction

1.2 Classification System

1.3 The Locarno Classification

1.4 Classification-Finding a class

1.5 Sub-divisions

1.6 Case of Doubt

1.7 Multiple indexing

1.8 Multiple designs

1.9 Multiple designs in relation to one product

1.10 Common design in relation to more than one product

1.11 Difficult cases

1.12 Preparation of file

1.13 Entering classification data on the system

Chapter 2 - Entitlement

2.1 Introduction

2.2 The statement of entitlement

2.3 Who is entitled to be the registered owner of the design?

2.4 The designer of the design is the owner

2.5 Agreement for valuable consideration

2.6 Employee

2.7 Assignment

2.8 No statement of entitlement on the application form

Chapter 3 – Applicant Name

3.1 Introduction

3.2 Who is a person?

3.3 Bodies corporate

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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3.4 Not a person

3.5 Trusts

3.6 Unclear if applicant is a person

3.7 "Trading as"

3.8 Multiple design applications/consistent applicants

3.9 Change of name of applicant

Chapter 4 – Applicant’s Address

4.1 Introduction

4.2 Applicant’s Address

Chapter 5 – Address for Service

5.1 Introduction

5.2 Private Applicants

5.3 Attorneys

5.4 No Address for Service

Chapter 6 – (reserved)

Chapter 7 – Product Name

7.1. Introduction.

7.2 Insufficient information

7.3 Too much information

7.4 Representations

Chapter 8 – Section 43

8.1 Introduction

8.2 Designs which must not be registered

8.3 Scandalous Designs

8.4 Integrated Circuits

Chapter 9 – Statement of Newness and Distinctiveness

9.1 Introduction

9.2 Requirements This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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Part 2 - Examination

Chapter 10 – Convention Details

10.1 Introduction

10.2 Formalities Requirements

10.3 Copies of Basic Applications

Chapter 11 – Excluded Design Details

11.1 Introduction

11.2 Status of the initial application

11.3 Excluded by amendment

11.4 Not excluded by amendment

11.5 Registration/publication requests

11.6 Can representations be transferred?

Chapter 12 – Registration/Publication Request

12.1 Introduction

12.2 Original request

12.3 Subsequent requests for registration

12.4 Subsequent requests for publication

12.5 Form of request

12.6 Converted applications

12.7 Excluded designs

12.8 Further designs

Chapter 13 – Designer Name

13.1 Introduction

13.2 Who is the designer?

13.3 Summary

Chapter 14 - Representations

14.1 Introduction

14.2 Product

14.3 General requirements for representations


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14.4 Photographs

14.5 Drawings

14.6 Specimens

14.7 Amendments

Chapter 15 – Further Designs

15.1 Introduction

15.2 More than one design

15.3 More than one product (Common Design)

15.4 Dealing with further designs

15.5 In different Locarno Classes

15.6 Paid ITP

Chapter 16 - Amendments

16.1 Introduction

16.2 Scope of the application/inclusion of matter

16.3 Amending the name of the applicant

16.4 Amending the address for service

16.5 When a formal (written) request has been received

16.6 Informal requests

16.7 Assignment requests

16.8 Amending the application documents.

Chapter 17 – Formalities Checking Procedures

17.1 Introduction

17.2 Purpose of the formalities check

Step 1

17.3 Obtaining designs case files for checking

Step 2

17.4 Checking correspondence

Step 3

17.5 Formalities worksheet

Step 4


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17.6 Writing/typing the first deficiency notice

17.6.1 Order and numbering of deficiencies

17.6.2 Guide-lines for an acceptable notice

17.6.3 Final step

17.6.4 Further notices

17.6.5 Writing further notices

17.6.6 Missed deficiencies

Step 5

17.7 Clearing for registration

Other Matters

17.8 Section 137

17.8.1 Procedure for lapsed applications

17.9 Dealing with the clearance of ad-hoc letters

17.10 Signing off

Part 2 Examination

D01 Citation Index


D03 Examination Process

D03.1 Overview

D03.1.1 Certificate of examination, and ‘certified’

D03.2 Requesting examination – requirements

D03.3 Who may request examination?

D03.4 Which Designs may be examined?

D03.5 Court proceedings

D03.6 Handling plural concurrent requests for examination

D03.7 Handling requests for examination when a Certificate of Examination has previously issued

D03.8 Further reports

D03.9 Being ‘satisfied’

D03.9.1 Satisfied


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D03.9.2 Not satisfied

D03.10 Period for completion of examination

D03.10.1 Last-minute responses; time for filing a request for hearing

D03.11 Withdrawal of request for examination

D03.12 Interface with Court Proceedings.

D03.13 Intention to Certify

D03.14 Material provided by a 3rd party

D03.15 Procedure for Third Party Examinations

D03.16 Procedures for Designs Revocation

D03.17 Expedited Examination

D04 Identifying the Design

D04.1 Introduction

D04.1.1 Plural designs

D04.1.2 Effect of other Designs on interpretation

D04.1.3 Effect of statements made during prosecution

D04.2 Design in relation to a product

D04.3 What is a product?

D04.3.1 The owner’s identification of the product

D04.3.2 “Any thing that is manufactured or hand made”

D04.3.3 Products and human beings

D04.3.4 A component part of a complex product if made separately

D04.3.5 Indefinite dimensions

D04.3.6 Kits

D04.3.7 Common designs and multiple products

D04.4 Overall appearance, and visual features

D04.4.1 Overall appearance resulting from …

D04.4.2 Visual feature - shape, configuration, pattern and ornamentation

D04.4.3 Functional purpose

D04.4.4 Internal features as visual features

D04.4.5 Colour as a visual feature


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D04.4.6.1 Colour as used in representations

D04.4.7 What cannot be a visual feature

D04.4.7.1 the feel of the product:

D04.4.7.2 the materials used in the product:

D04.4.7.3 in the case of a product that has one or more indefinite dimensions:

D04.5 Interpretation of representations

D04.5.1 Drafting styles

D04.5.2 The nature of representations

D04.5.3 Unclear representations

D04.6 Role of a Statement of Newness and Distinctiveness

D04.6.1 Illustrative statements

D04.6.1.1 Ambit statements

D04.6.1.2 Descriptive statements

D04.6.1.3 Limiting the design to one or more of Shape, Configuration, Pattern or Ornamentation

D04.6.1.4 Statements referring to all the features of the design

D04.6.1.5 Methods of manufacture or use

D04.6.1.6 Statements of assertion

D04.6.1.7 Statements referring to features not shown in the representations

D04.6.1.8 Features not otherwise visible

D05 Designs which must not be registered

D05 Designs which must not be registered – s.43, Reg 4.06

D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)]

D05.2 Integrated circuits [s.43(1)(c)]

D05.3 Medals [reg 4.06(a)]

D05.4 Protection of Word ‘Anzac’ Regulations …..

D05.5 Paper money, securities [reg 4.05(c)]

D05.6 Scandalous designs


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D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]

D06 Priority Dates

D06.1 Background, general issues

D06.1.1 Plural Designs

D06.1.2 Multiple bases for Priority

D06.1.3 When must Priority be asserted?

D06.2 Priority date – Convention Applications

D06.2.1 Background

D06.2.2 Basic requirements

D06.2.3 Convention Countries

D06.2.3.1 Regional applications

D06.2.3.2 New Convention Countries

D06.2.4 The Basic Application

D06.2.4.1 The Design

D06.2.4.2 Types of priority applications

D06.2.4.3 First application

D06.2.4.4 Devolution of title

D06.2.5 Priority documents

D06.2.5.1 Requirements of the priority document

D06.2.5.2 Translation of the priority document

D06.2.6 Requesting the priority document during examination

D06.2.7 Third-party requests for priority documents

D06.2.8 Requests for priority documents – court proceedings

D06.2.9 The Formalities check on a Convention Application

D06.2.10 Disregarding certain basic applications

D06.3 Priority date – Excluded Designs

D06.4 Priority date – Applications by an entitled person (s.52, 53 or 54)

D06.5 Priority date – Converted Applications

D07 Prior Art Base


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D07.1 General Information/Background

D07.2 Publicly used in Australia

D07.3 Published in a document within or outside Australia

D07.3.1 Document

D07.3.1.1 Trade marks and patents as citations

D07.3.2 Published

D07.3.3 Within or Outside Australia

D07.3.4 Establishing publication date

D07.4 Designs disclosed in applications

D07.5 Exhibitions, Unauthorised disclosures

D07.5.1 Exhibitions

D07.5.1.1 Exhibitions – Official or Officially recognised

D07.5.1.2 Exhibitions – International

D07.5.2 Unauthorised disclosures

D07.5.3 Disclosures to the Commonwealth, a State or a Territory

D07.6 Copyright overlap – s.18

D07.6.1 Introduction

D07.6.2 General Approach in examination

D07.6.2.1 The basic conditions for s.18.

D07.6.2.2 Exclusion from s.18: ‘applied industrially’

D07.6.2.3 Prior publication in a patent specification or design

D07.6.3 S.18 issues – more detailed discussion

D07.6.3.1 Conditions for s.18 to apply

D07.6.3.2 Artistic work

D07.6.3.3 Corresponding Design

D07.6.3.4 Applied for - by, or with the consent of, the copyright owner

D07.6.3.5 Limits on S.18 application

D07.6.3.5.1 use previously made of the artistic work

D07.6.3.5.2 Acts which negate s.18

D07.6.3.5.3 Applied Industrially.


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D07.6.3.5.4 Previous use with consent – by acquiescence

Appendix – Examiner’s worksheet

D08 Searching


D08.2 The Search Strategy

D08.3 Searching tools

D08.3.1 IP-Office databases with good search capability

D08.3.2 Internet sources with good search capability

D08.3.3 Less-efficient search sources

D08.4 Record Keeping

Annex A Sample Searching Worksheet

D09 Assessing Newness and Distinctiveness

D09.1 Overview

D09.1.1 Subject-matter issues.



D09.3.1 The presence of extra visual features in citations

D09.3.2 Inferring the impression – hidden perspectives


D09.4.1 Similarities and differences

D09.4.2 State of development of the prior art base for the design

D09.4.3 Statements of Newness and Distinctiveness

D09.4.3.1 Ambit statements of newness and distinctiveness

D09.4.3.2 No statement of newness and distinctiveness

D09.4.4 Amount, quality and importance

D09.4.5 Freedom of the creator of the design to innovate

D09.4.5.1 Background

D09.4.5.2 External factors

D09.4.5.3 ‘Particularly new’ designs


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D09.4.6 Informed User

D09.4.6.1 Historical Background

D09.4.6.2 Purpose of the ‘Standard of the Informed User’

D09.4.6.3 The Standard of the Informed User

D09.4.6.4 Assessing declaratory evidence to establish the standard of the informed user

D10 Amendments during Examination

D10.1 Overview


D10.2.1 Time for making S.28 amendments

D10.2.2 Amending a Statement of Newness and Distinctiveness

D10.2.3 ‘Voluntary’ requests to amend under s.28


D10.4 Allowability – inclusion of matter not in substance disclosed

D10.5 Allowability – increasing scope of the Design Registration

D10.6 Amendment of statement of newness and distinctiveness

D11 Extension of Time – s.137

D11.1 Introduction

D11.2 S.137(1) – Error or Omission by the Registrar...

D11.2.1 General Considerations

D11.2.2 Advertisement of section 223(1)

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner

D11.3 S.137(2) - Summary of the Principles of Law

D11.3.1 Beneficial Nature of Section 137

D11.3.2 Burden of Proof

D11.3.3 Nature of an Error or Omission

D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act

D11.3.5 Balance of Factors Including Full and Frank Disclosure

D11.3.6 Circumstances Beyond Control

D11.4 Making the Application – s.137(2)


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D11.4.1 General Comments

D11.4.2 Person concerned: Change of ownership

D11.4.3 Fees Payable

D11.5 Registrar’s Discretion – s.137(2)


D11.5.2 Lack of Purpose

D11.5.3 Private and public interests

D11.5.4 Functus Officio

D11.5.5 Delay

D11.5.6 Protection Provisions

D11.6 Advertisement Of Extension - Subsection 137(4)

D11.6.1 General Requirements

D11.6.2 Directing Advertisement

D11.7 Period of Extension to be Granted

D11.7.1 General Principles

D11.7.2 Extensions for Completion of Examination

D11.7.3 Renewal due before Design restored

D11.8 Common Deficiencies

D11.9 Protection and compensation arrangements

D11.9.1 Extensions granted under the Designs Act 2003


D12 Assignment etc of Designs; the Register

D12.1 Introduction

D12.1.1 Effect of Registration

D12.1.2 Consequence of Not Registering

D12.1.3 Knowingly or Recklessly Making False Entries

D12.2 Registering Assignments

D12.2.1 Evidence of the Assignment or devolution

D12.2.2 Particular issues with assignments or devolution

D12.2.2.1 Ceased Designs


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D12.2.2.2 Errors in the assignment document

D12.2.2.3 Assignee must be a Person

D12.2.2.4 Mergers vis à vis Assignments

D12.2.2.5 Time-limited assignments, partial assignments

D12.2.2.6 Entitlement of Later Registered Owner

D12.2.2.7 Assignment when there is a Registered Interest

D12.2.2.8 Assignment by a Co-owner

D12.2.2.9 Assignment by a Minor/Infant

D12.2.2.10 Retrospective assignments

D12.3 Registering other interests

D12.3.1 General issues

D12.3.2 Licenses

D12.3.3 Registration of other Interests

D12.4 Correction of the Register – Regulation 9.05

D12.4.1 Overview

D12.4.2 Clerical error or obvious mistake - Regulation 9.05(1) and (2)(a)

D12.4.3 Adding a new Registered Owner

D12.4.4 Adding a new Designer

D12.4.5 Change the name or address - Regulation 9.05(2)(b)

D12.5 Trusts, Bankruptcy, Insolvency

D12.5.1 Trusts

D12.5.2 Bankruptcy

D12.5.3 Winding up of Companies

D13 Ownership disputes

D13.1 Overview of ownership disputes

D13.2 S.29 disputes

D13.2.1 s.29 disputes – between co-applicants

D13.2.2 s.29 Disputes – another person claiming entitlement

D13.2.2.1 Procedures for allowing inspection of an unpublished design application.


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D13.2.3 S.29 Disputes where some or all of the designs have been Registered or published

D13.3 S.30 Disputes Associated with recording assignments

D13.4 S.52 Revocation relating to Entitled Persons

D13.4.1 Overview

D13.4.2 Process for handling s.52 requests

D13.4.2.1 The requirement of the request

D13.4.2.2 Filing evidence

D13.4.2.3 Production of Documents

D13.4.2.4 Cross-examination of witnesses – issuing a notice to appear.

D13.4.2.5 The hearing, and decision.

D13.4.3 Typical bases for disputes

D13.5 Application by Entitled persons after revocation

D14 Publication, File access


D14.3 File access

D14.3 Right of Lien

D15 Surrender of a Design

D15.1 Overview

D15.2 Processing an offer to surrender

D15.2 Discretionary considerations in Accepting the Offer

D16 Prohibition Orders

D16.1 Overview

D16.2 Initial Processing

D16.3 Effect of a prohibition order

D16.4 Removal of a prohibition order

D16.5 Appeal rights


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Part 1 - Formalities

Table Of Contents Part 1 - Formalities ................................................................................................................ 1

Designs Formalities Quality Standards .............................................................................. 1

Designs Formalities Quality Standards ................................................................................. 1

PQS 2 - Service request processing is complete and correct - formalities checks - Tier 2 . 2

PQS 3 – Service request processing is complete and correct - report writing, record-keeping and administration - Tier 3 .................................................................................... 2

Chapter 1 - Classification ...................................................................................................... 4

1.1 Introduction ................................................................................................................. 4

1.2 Classification System .................................................................................................. 4

1.3 The Locarno Classification ......................................................................................... 4

1.4 Finding the right Class ................................................................................................ 5

1.5 Sub-classes (Sub-subclasses) .................................................................................... 6

1.6 Case of Doubt............................................................................................................. 6

1.7 Multiple Classification ................................................................................................. 6

1.8 Multiple Designs for more than one Product ............................................................... 7

1.9 Multiple Designs for one Product ................................................................................ 7

1.10 Common Design in Relation to more than one Product ............................................ 7

1.11 Difficult Cases ........................................................................................................... 7

1.12 Entering Classification Data on the System .............................................................. 7

Chapter 2. Entitlement .......................................................................................................... 8

2.1 Introduction ................................................................................................................. 8

2.2 The Statement of Entitlement ..................................................................................... 8

2.3 Who is entitled to be the registered owner of the design? ........................................... 8

2.4 The designer of the design is the owner ..................................................................... 9

2.5 Contractual agreements ............................................................................................. 9

2.6 Employee ................................................................................................................... 9

2.7 Assignment ................................................................................................................. 9

2.8 No Statement of Entitlement on the application form .................................................. 9

Chapter 3. Applicant Name ................................................................................................. 11

3.1 Introduction ............................................................................................................... 11

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 July 2015

iii


3.2 Who is a Person ....................................................................................................... 11

3.3 Bodies Corporate ...................................................................................................... 11

3.4 Not a Person ............................................................................................................ 12

3.5 Trusts ....................................................................................................................... 12

3.6 Unclear if Applicant is a Person ................................................................................ 13

3.7 "Trading As" ............................................................................................................. 13

3.8 Multiple Design Applications - Consistent Applicants ................................................ 13

3.9 Change of Name of Applicant ................................................................................... 13

Chapter 4. Applicant Address .............................................................................................. 14

4.1 Introduction ............................................................................................................... 14

4.2 Applicant's Address .................................................................................................. 14

Chapter 5. Address for Service ........................................................................................... 15

5.1 Introduction ............................................................................................................... 15

5.2 Private Applicants ..................................................................................................... 15

5.3 Attorneys .................................................................................................................. 15

5.4 No Address for Service ............................................................................................. 15

Chapter 6. (reserved) .......................................................................................................... 16

Chapter 7. Product Name ................................................................................................... 17

7.1 Introduction ............................................................................................................... 17

7.2 Insufficient Information .............................................................................................. 17

7.3 Too Much Information ............................................................................................... 17

7.4 Representations ....................................................................................................... 17

Chapter 8. Section 43 ......................................................................................................... 18

8.1 Introduction ............................................................................................................... 18

8.2 Designs which must not be Registered ..................................................................... 18

8.3 Scandalous designs ................................................................................................. 18

8.4 Integrated Circuit (Microchip) or part of an Integrated Circuit or a mask used for an Integrated Circuit ............................................................................................................. 19

Chapter 9. Statement of Newness and Distinctiveness ....................................................... 20

9.1 Introduction ............................................................................................................... 20

9.2 More than one statement .......................................................................................... 20


iv

Table Of Contents

Chapter 10. Convention Details .......................................................................................... 21

10.1 Introduction ............................................................................................................. 21

10.2 Formalities Requirements ....................................................................................... 21

10.3 Copies of Basic Applications ................................................................................... 21

Chapter 11. Excluded Design Details .................................................................................. 23

11.1 Introduction ............................................................................................................. 23

11.2 Priority Date of Excluded Designs ........................................................................... 23

11.3 Status of the Initial Application ................................................................................ 23

11.4 Excluded by Amendment ........................................................................................ 24

11.5 Not Excluded by Amendment ................................................................................. 24

11.6 Registration / Publication Requests ........................................................................ 24

Chapter 12. Registration / Publication Request ................................................................... 25

12.1 Introduction ............................................................................................................. 25

12.2 Original Request ..................................................................................................... 25

12.3 Subsequent Requests for Registration - Applications in respect of more than one design.............................................................................................................................. 25

12.4 Subsequent Requests for Publication ..................................................................... 25

12.5 Form of Request ..................................................................................................... 26

12.6 Excluded Designs ................................................................................................... 26

12.7 Further Designs ...................................................................................................... 26

Chapter 13. Designer Name ................................................................................................ 27

13.1 Introduction ............................................................................................................. 27

13.2 Who is the Designer? ............................................................................................. 27

13.3 Summary ................................................................................................................ 27

Chapter 14. Representations .............................................................................................. 28

14.1 Introduction ............................................................................................................. 28

14.2 Product ................................................................................................................... 28

14.3 General Requirements for Representations ............................................................ 28

14.4 Photographs ........................................................................................................... 29

14.5 Drawings ................................................................................................................ 30

14.6 Specimens .............................................................................................................. 31


v


14.7 Amendments .......................................................................................................... 31

Chapter 15. Further Designs ............................................................................................... 32

15.1 Introduction ............................................................................................................. 32

15.2 More than One Design ............................................................................................ 32

15.3 More than One Product (Common Design) ............................................................. 32

15.4 Dealing with Further Designs .................................................................................. 33

15.5 Paid Additional Fees ............................................................................................... 33

Chapter 16. Amendments ................................................................................................... 34

16.1 Introduction ............................................................................................................. 34

16.2 Scope of the Application/Inclusion of Matter ........................................................... 34

16.3 Amending the Name of the Applicant ...................................................................... 36

16.4 Amending the Address for Service .......................................................................... 36

16.5 When a Formal (Written) Request has been received ............................................. 37

16.6 Assignment Requests ............................................................................................. 37

16.7 Amending the Application Documents .................................................................... 38

Chapter 17. Formalities Checking Procedure ...................................................................... 39

17.1 Introduction ............................................................................................................. 39

17.2 Purpose of the Formalities Check ........................................................................... 39

Step 1 .......................................................................................................................... 39

Step 2 .......................................................................................................................... 40

Step 3 .......................................................................................................................... 40

Step 4 .......................................................................................................................... 41

Step 5 .......................................................................................................................... 43

Other Matters .................................................................................................................. 43

17.8 Section 137 ......................................................................................................... 43

17.9 Dealing with Ad-Hoc Letters ................................................................................ 44


vi



1

Part 1 Formalities



3

Table Of Contents Part 1 - Formalities ................................................................................................................ 7

Designs Formalities Quality Standards .............................................................................. 7

Designs Formalities Quality Standards ................................................................................. 7

PQS 2 - Service request processing is complete and correct - formalities checks - Tier 2 . 8

PQS 3 – Service request processing is complete and correct - report writing, record-keeping and administration - Tier 3 .................................................................................... 8

Designs .......................................................................................................................... 9

Oppositions and Hearings ............................................................................................ 10

Chapter 1 - Classification .................................................................................................... 11

1.1 Introduction ............................................................................................................... 11

1.2 Classification System ................................................................................................ 11

1.3 The Locarno Classification ....................................................................................... 11

1.4 Finding the right Class .............................................................................................. 12

1.5 Sub-classes (Sub-subclasses) .................................................................................. 13

1.6 Case of Doubt........................................................................................................... 13

1.7 Multiple Classification ............................................................................................... 13

1.8 Multiple Designs for more than one Product ............................................................. 14

1.9 Multiple Designs for one Product .............................................................................. 14

1.10 Common Design in Relation to more than one Product .......................................... 14

1.11 Difficult Cases ......................................................................................................... 14

1.12 Entering Classification Data on the System ............................................................ 14

Chapter 2. Entitlement ........................................................................................................ 16

2.1 Introduction ............................................................................................................... 16

2.2 The Statement of Entitlement ................................................................................... 16

2.3 Who is entitled to be the registered owner of the design? ......................................... 16

2.4 The designer of the design is the owner ................................................................... 17

2.5 Contractual agreements ........................................................................................... 17

2.6 Employee ................................................................................................................. 17

2.7 Assignment ............................................................................................................... 17

2.8 No Statement of Entitlement on the application form ................................................ 17



4

Chapter 3. Applicant Name ................................................................................................. 19

3.1 Introduction ............................................................................................................... 19

3.2 Who is a Person ....................................................................................................... 19

3.3 Bodies Corporate ...................................................................................................... 19

3.4 Not a Person ............................................................................................................ 20

3.5 Trusts ....................................................................................................................... 20

3.6 Unclear if Applicant is a Person ................................................................................ 21

3.7 "Trading As" ............................................................................................................. 21

3.8 Multiple Design Applications - Consistent Applicants ................................................ 21

3.9 Change of Name of Applicant ................................................................................... 21

Chapter 4. Applicant Address .............................................................................................. 22

4.1 Introduction ............................................................................................................... 22

4.2 Applicant's Address .................................................................................................. 22

Chapter 5. Address for Service ........................................................................................... 23

5.1 Introduction ............................................................................................................... 23

5.2 Private Applicants ..................................................................................................... 23

5.3 Attorneys .................................................................................................................. 23

5.4 No Address for Service ............................................................................................. 23

Chapter 6. (reserved) .......................................................................................................... 24

Chapter 7. Product Name ................................................................................................... 25

7.1 Introduction ............................................................................................................... 25

7.2 Insufficient Information .............................................................................................. 25

7.3 Too Much Information ............................................................................................... 25

7.4 Representations ....................................................................................................... 25

Chapter 8. Section 43 ......................................................................................................... 26

8.1 Introduction ............................................................................................................... 26

8.2 Designs which must not be Registered ..................................................................... 26

8.3 Scandalous designs ................................................................................................. 26

8.4 Integrated Circuit (Microchip) or part of an Integrated Circuit or a mask used for an Integrated Circuit ............................................................................................................. 27

Chapter 9. Statement of Newness and Distinctiveness ....................................................... 28



5

9.1 Introduction ............................................................................................................... 28

9.2 More than one statement .......................................................................................... 28

Chapter 10. Convention Details .......................................................................................... 29

10.1 Introduction ............................................................................................................. 29

10.2 Formalities Requirements ....................................................................................... 29

10.3 Copies of Basic Applications ................................................................................... 30

Chapter 11. Excluded Design Details .................................................................................. 31

11.1 Introduction ............................................................................................................. 31

11.2 Priority Date of Excluded Designs ........................................................................... 31

11.3 Status of the Initial Application ................................................................................ 31

11.4 Excluded by Amendment ........................................................................................ 32

11.5 Not Excluded by Amendment ................................................................................. 32

11.6 Registration / Publication Requests ........................................................................ 32

Chapter 12. Registration / Publication Request ................................................................... 33

12.1 Introduction ............................................................................................................. 33

12.2 Original Request ..................................................................................................... 33

12.3 Subsequent Requests for Registration - Applications in respect of more than one design.............................................................................................................................. 33

12.4 Subsequent Requests for Publication ..................................................................... 33

12.5 Form of Request ..................................................................................................... 34

12.6 Excluded Designs ................................................................................................... 34

12.7 Further Designs ...................................................................................................... 34

Chapter 13. Designer Name ................................................................................................ 35

13.1 Introduction ............................................................................................................. 35

13.2 Who is the Designer? ............................................................................................. 35

13.3 Summary ................................................................................................................ 35

Chapter 14. Representations .............................................................................................. 36

14.1 Introduction ............................................................................................................. 36

14.2 Product ................................................................................................................... 36

14.3 General Requirements for Representations ............................................................ 36

14.4 Photographs ........................................................................................................... 37



6

14.5 Drawings ................................................................................................................ 38

14.6 Specimens .............................................................................................................. 39

14.7 Amendments .......................................................................................................... 39

Chapter 15. Further Designs ............................................................................................... 40

15.1 Introduction ............................................................................................................. 40

15.2 More than One Design ............................................................................................ 40

15.3 More than One Product (Common Design) ............................................................. 40

15.4 Dealing with Further Designs .................................................................................. 41

15.5 Paid Additional Fees ............................................................................................... 41

Chapter 16. Amendments ................................................................................................... 42

16.1 Introduction ............................................................................................................. 42

16.2 Scope of the Application/Inclusion of Matter ........................................................... 42

16.3 Amending the Name of the Applicant ...................................................................... 44

16.4 Amending the Address for Service .......................................................................... 44

16.5 When a Formal (Written) Request has been received ............................................. 45

16.6 Assignment Requests ............................................................................................. 46

16.7 Amending the Application Documents .................................................................... 46

Chapter 17. Formalities Checking Procedure ...................................................................... 47

17.1 Introduction ............................................................................................................. 47

17.2 Purpose of the Formalities Check ........................................................................... 47

Step 1 .......................................................................................................................... 47

Step 2 .......................................................................................................................... 48

Step 3 .......................................................................................................................... 48

Step 4 .......................................................................................................................... 49

Step 5 .......................................................................................................................... 51

Other Matters .................................................................................................................. 51

17.8 Section 137 ......................................................................................................... 51

17.9 Dealing with Ad-Hoc Letters ................................................................................ 52



7




IP Australia recognises that the services it provides must comply with the requirements of the Designs Act 2003 and Regulations, and meet expectations of quality from its customers. IP Australia's Quality Policy is available on the IP Australia website.

To ensure that customer's expectations are met, a set of quality standards for designs formalities has been developed.

The quality standards support IP Australia's commitment to providing high quality designs services for the benefit of Australia. These standards will be continually refined in the light of experience and comments from our customers.

The Product Quality Standards should be read in consideration with the practices and procedures detailed in the Designs Examiner’s Manual. The Product Quality Standards do not define practices and procedures. The Designs Examiner’s Manual details practices and procedures and the Standards assess adherence to those practices and procedures.

For a product to comply with a Standard, it must comply with all the relevant attributes defined for that Standard. Conversely, if the product is non-conforming to at least one of the attributes, it will be deemed not to conform to that Standard.

The Product Quality Standards will be reviewed regularly and/or updated as required in order to reflect the appropriate product quality attributes. A printer-friendly A3-sized approved version of the PQS can be found by clicking on the heading below.

Formalities Product Quality Standards (Printable Word Version)

Tier 1

Not applicable

Tier 2

PQS 2 – Service request processing is complete and correct – formalities checks

Tier 3

PQS 3 – Service request processing is complete and correct – report writing, record-keeping and administration

NOTE: All relevant Standards will apply to all reports at all stages of this service request.



8

PQS 2 - Service request processing is complete and correct - formalities checks - Tier 2

2.1 Formalities checks correctly applied

2.1.1 No design in the application is subject to refusal.

2.1.2 The excluded design was disclosed in the initial application (if applicable).

2.1.3 The request for registration is evident on the case file, was validly filed within the statutory period and covers all designs in the application.

2.1.4 The application substantially complies with Schedule 2.

2.1.5 The number of designs covered by the request for registration matches the number of designs identified in the application.

2.1.6 All products are identified sufficiently for classification purposes.

2.1.7 All designs belong to the same class.

2.1.8 Approved forms are in English; other documents are in English or accompanied with a translation and certificate of verification.

2.1.9 Specimens meet storage and reproducibility requirements (if applicable).

2.1.10 The correct number of copies of representations has been filed.

2.2 The application substantially complies with the approved form

2.2.1 The entitled person is a legal entity.

2.2.2 The applicant is a legal entity

2.2.3 The designer is a natural person.

2.2.4 The convention details are complete (if applicable).

PQS 3 – Service request processing is complete and correct - report writing, record-keeping and administration - Tier 3

3.1 Report writing, record-keeping and administration are correct



9

3.1.1 The design is classified correctly.

3.1.2 All claims to priority fall within the relevant statutory period.

3.1.3 The Registration Formalities Worksheet is filled out and completed appropriately.

3.1.4 Reports are attached to file and are free from frequent or serious spelling, typographical or grammatical mistakes.

3.1.5 Reports are free from inconsistencies.

3.1.6 Format and details of the report are correct.

3.1.7 The appropriate word processing codes are used in the report.

3.1.8 Reports are written in plain English and first person.

3.1.9 Reports are structured with appropriate headings and subheadings.

3.1.10 Records of conversations relevant to the formalities outcome of the application are recorded on file.

3.1.11 Email correspondence relevant to the formalities outcome of the application is attached to file.

Further information about IP Australia’s commitment to quality is found in the Quality Management Systems Manual. Quality Management Systems Manual.

Within the Quality Management Systems Manual is the IP Australia Quality Manual. Included at 5.4.1 are the Quality Objectives for the Trade Marks and Designs Group. These have been reproduced below:

Designs

Quality Objective Minimum performance undertaking

Designs reports over 3rd will be less than 5% of total reports. <5%

We will examine and issue a report on your registered design within 13 weeks of receiving your request for examination.

We will achieve this 90% of the time

We will respond to correspondence relating to the examination of your design application within 20 working days of receiving the correspondence


We will undertake a formalities check of your design application within 8 weeks of receiving a request for registration.

We will achieve this 95% of the



10

time.

Oppositions and Hearings


We will issue our decision within 12 weeks of holding a hearing, unless we receive further submissions or evidence.

We will achieve this 90% of the time.

Chapter 1 - Classification


11


1.1 Introduction

Classification means sorting things into groups or classes based on their similarities. All designs are applied to products. As there is no system for classifying designs, it is the products which are sorted into classes. The classification of the products is based on their function, i.e. purpose or use for which the product is intended.

Design applications are classified in order to make searching for similar designs much easier. As searching is carried out by the public, legal representatives, overseas design offices as well as IP Australia, correct classification is extremely important. If registered designs are not classified correctly a search will not be effective.

1.2 Classification System

The classification system used in Australia is based on the on the "International Classification For Industrial Designs", (IDC) also called the Locarno Classification as it was established by the Locarno Agreement. Australia is not a party to this agreement, but the classification system is still used by this office. The 10th edition of the Locarno classification has 32 classes, the majority of which are further divided into sub-classes.

In Australia the sub-classes are further divided into sub-subclasses based on specific function/purpose of the product in that sub-class. For example:

05-06A

05 – Class (Textile piece goods, Artificial and Natural sheet material)

06 – Sub-class (Artificial and Natural sheet material)

A – Sub-subclass (Wallpaper)

1.3 The Locarno Classification

The Locarno Classification book (Locarno) contains four relevant parts:

1. a list of classes

2. a list of classes and sub-classes, with explanatory notes



12

3. an alphabetical listing of products

4. a listing of the products in their class and sub-class order

Generally, we will use the third and fourth parts (above).

1.4 Finding the right Class

The Office classifies according to the information shown in the application. To start classifying, go to the name of the product offered by the applicant. Make sure that the name of the product correlates to what is shown in the representations.

1.4.1 Once the product name has been identified, a brief search of the Register for the product to which the design relates may give insight to a suitable classification. It may be necessary to translate the applicant's name of product to its generic form, e.g. "oral interpersonal communication device" to "telephone". When using this method, always consult the Australian Designs Classification Codes to determine whether the classification is appropriate.

The above is method for classifying will not always be effective. The following procedures may help with the less straightforward classifications. These should be attempted in order, so if "A" does not work try "B" and so on.

1.4.2 (A) Another Word

Try to find another word that might describe the product, i.e. footwear could be shoe, storage furniture could be cabinet etc. (The particular style of product names found in Locarno become more familiar with frequent use.) Then use this other word to classify the product.

1.4.3 (B) Similar Word

Try to find the name of a similar product, i.e. stool to chair, pick to shovel, timepiece to watch or clock, diaper to nappy etc. Then use this similar word to classify the product.

1.4.4 (C) Purpose

If the use or purpose of the product is apparent, the “list of classes” or the “list of classes and sub-classes with explanatory notes” in Locarno can be used to identify possible classes that the product may fit into. After finding possible classes and/or sub-classes, the “list of goods in class order” should be consulted to try and find similar product(s).

1.4.5 (D) Owner



13

A search of the Owner’s earlier designs (in relation to similar products) can be useful to determine an appropriate classification

1.4.6 Statement of Newness and Distinctiveness (SoND)

If supplied, a SoND may give further detail in relation to the product which may assist in determining the most appropriate class(es).

1.5 Sub-classes (Sub-subclasses)

Once the product is classified, check if the sub-class has been divided further into a set of sub-subclasses. If it does it will have to be further classified into that sub-subclass. Go through each sub-subclass and see if one suits the product. If not, it goes in the "Z" sub-subclass (also referred to as “NES” (Not Elsewhere Specified)).

1.6 Case of Doubt

Sometimes the product names and representations are so vague that it is not possible to accurately classify the design. In this instance a tentative classification should be made. I n these cases, the fact that the classification is tentative should be communicated to the Formalities Officer so that it is clear that more information should be requested when formalities are checked.

1.7 Multiple Classification

At times a single product may have more than one classification. This is rare but acceptable. An example is a folding beach chair with an umbrella and cooler attachments.

There may be occasions where a product could be classified in more than one class. For example, toner cartridges can be classified in 14-02, 16-03 or 18-02, depending upon use. Rather than classifying this product in all three classes, clarification should be sought from the applicant to ensure that the most appropriate class is selected.



14

1.8 Multiple Designs for more than one Product

When a design application contains multiple designs applied to different products, all of the products must belong to the same Locarno class. They may belong to different sub-classes, but they must belong to the same class.

When it is clear that not all of the products shown in a multiple design application fit in the same Locarno class, a deficiency notice should be sent, advising the applicant to delete or exclude one or more of the designs.

1.9 Multiple Designs for one Product

More than one design for a single product will only need one classification.

1.10 Common Design in Relation to more than one Product

When an application is for a single design and more than one product is both named and shown, each product should be classified accordingly. There is no restriction to Locarno Classification as affects 1.8.

1.11 Difficult Cases

If classification for a particular product proves difficult you should seek advice from the Team Leader of Designs Examination.

1.12 Entering Classification Data on the System



15

The classification must be entered on the Designs Administration system.

Chapter 2. Entitlement


16


2.1 Introduction

A person is entitled to be entered on the Register as the registered owner of the design. Who is entitled to be registered as the registered owner is further discussed in this chapter at 2.3.

2.2 The Statement of Entitlement

The approved Design Application form includes this statement. When the form is completed by the applicant/s, they have made a statement that they are entitled to be the registered owner of the design.

Design application forms lodged by a legal representative or agent acting on behalf of the applicant should include a statement that the applicant is entitled to be entered on the register as the registered owner of the design.

2.3 Who is entitled to be the registered owner of the design?

There are five ways in which an applicant can be entitled to be the registered owner of a design. They are referred to under s13 of the Designs Act. Briefly, the five ways are:

a. the designer of the design is the owner

b. the design was created under a contract between the designer and the owner

c. the designer made the design whilst employed by the owner

d. by way of assignment, devolution by will or by operation of law from the designer to the owner

e. the legal personal representative of a deceased person mentioned above.

Further detail and explanation of the above five is given below.



17

2.4 The designer of the design is the owner

This is the basic rule. Unless otherwise stated, the designer of the design is the owner.

2.5 Contractual agreements

If a person or his/her employee creates a design for another person under an agreement, the other person is entitled to apply.

2.6 Employee

When a person makes a design in the course of his/her employment with an employer, his/her employer is the owner of the design, unless there is an agreement to the contrary.

2.7 Assignment

This is the case where the designer or owner of the design can assign (sell) all or part of their interest in the design. This assignment has to be in writing and signed by both the assignor and the assignee, or on their behalf.

2.8 No Statement of Entitlement on the application form

2.8.1 Case 1

If the name of the applicant is exactly the same as the name of the designer, then no statement of entitlement is required.



18

For this to work, all of the applicants must be the designers. The names must also match exactly. For example, if the applicant is listed as John D. Smith, but the designer is listed as John Doe Smith and there is no statement of entitlement, entitlement should be questioned in a deficiency notice.

If there is more than one designer, then all the designers must be the applicants. The names must match exactly.

If the name of the applicant/s is not exactly the same as the designer/s, a request for a statement of entitlement should be made in the deficiency notice.

2.8.2 Case 2

If a separate statement of entitlement is lodged, this statement should clearly show that the applicant is the owner of the design and is therefore entitled to be entered on the register as the registered owner of the design. This statement should be signed and dated by the person making the statement.

If the statement does not clearly show entitlement, a request for a statement of entitlement should be made in the deficiency notice.

2.8.3 Case 3

If entitlement may be gleaned from the documents lodged in relation to the application (such as covering letters or information contained in the representations), it may not be necessary to require a formal statement of entitlement.

As is always the case, if entitlement is not clear, a request for a statement of entitlement should be made in the deficiency notice.

Chapter 3. Applicant Name


19


3.1 Introduction

Section 21 of the Act states that a design application must specify the person or persons that are entitled to be entered on the register as owners of the design. These persons are sometimes referred to as applicants within the Designs Office.

Normally the designer of the design is entitled to be the owner. Chapter 2 explains how a different person or persons may become entitled to be the owner(s) of an unregistered design.

The terms “person” or “persons” used throughout the Act must be read in the light of the Acts Interpretation Act.

3.2 Who is a Person

The term “person” is defined in the Acts Interpretation Act as including “a body politic or corporate as well as an individual”.

A body politic may be:

• a nation or a state, e.g. the Commonwealth of Australia, the State of New South Wales

• a Minister of the Crown, as distinct from the individual who, for the time being, is holding the portfolio.

Examples of a body corporate are:

• companies incorporated under the companies codes of the Australian States.

• Australian and overseas universities

3.3 Bodies Corporate

The following types of companies are recognized as bodies corporate:

Australia:



20

Limited (Ltd.)

Proprietary Limited (Pty. Ltd.)

and other countries with similar company laws

Abbreviations of types of companies recognised as bodies corporate.

3.4 Not a Person

Business Names and Firms do not fall within the definition of “person” or “legal person”. In this case, a deficiency notice should be raised. The notice should direct the applicant to request that the application be amended to show all of the principals (owners or partners) of the business or firm, if not already listed.

3.5 Trusts

Under Section 117 of the 2003 Act, no notice of a trust, whether express, implied or constructive may be entered on the Register.

Express: clearly indicated as such

Implied: indicated or suggested to

Constructive: relating to, or having some legal effect

Where the name of an applicant appears to be the name of a trust, this should be queried. The trust’s name as an applicant should be replaced by the name of the trustee. A trust imposes a personable equitable obligation on the trustee to deal with the property for the benefit of the beneficiaries or for the advancement of certain purposes (e.g. a charity). Because a trust is a relationship, it is a legal and factual impossibility for a trust to be an applicant or registered owner of a design.

Note: Despite the above, a trust that has been incorporated may be entered on the register as the owner.

The following may not be entered on the Register as the owner:

• XXX Family Trust

• Julie XXX, trustee for XXX Family Trust

The following may be entered on the Register as the owner:



21

• XXX Family Trust Pty Ltd,

• Julie XXX

3.6 Unclear if Applicant is a Person

If it is not clear that the applicant is a “person” or “legal person” within the meaning of these terms as defined above, then a deficiency notice should be raised. This notice should query the status of the applicant.

3.7 "Trading As"

Some applicant names are referred to as “A” trading as “B”. This is satisfactory as long as “A” meets the requirements of a person as referred to above. There is no requirement for “B” to meet the requirements of a person.

3.8 Multiple Design Applications - Consistent Applicants

An application may only have the one applicant or set of applicants. This type of inconsistency is more likely to occur between different designs in multiple design applications.

Where the applicants differ in any way between different designs in a multiple design application, a deficiency notice should be raised.

3.9 Change of Name of Applicant

The applicant name may be amended by correction or assignment. In the case of applications containing more than one design, the applicant name must be amended for every design in the application. See Chapter 16 for more details.

Chapter 4. Applicant Address


22

Chapter 4. Applicant Address

4.1 Introduction

The Designs Application Form includes a field for the applicant’s address. Therefore, in order to meet formalities, an address must be provided.

4.2 Applicant's Address

Examples of acceptable applicants addresses are Residential or Business addresses, or Roadside Mailboxes (RMB) and PO boxes.

Chapter 5. Address for Service


23

Chapter 5. Address for Service

5.1 Introduction

The Designs Application Form includes a field for an Address for Service in Australia to which all correspondence should be sent. Therefore, in order to meet formalities, an Address for Service in Australia must be provided.

5.2 Private Applicants

An applicant that is not represented by an attorney may state that their Address for Service is “as above” i.e. the same as their own address. However, they may nominate any address that they wish, so long as it is a physical address within Australia.

5.3 Attorneys

If the applicant is represented by an attorney, this fact must be clearly stated on the application form. For example, an attorney files an application with covering letter on their letterhead, but their name and address are not on the application form as the Address for Service. In this case, the Address for Service as listed on the form is the correct address to send correspondence, not the attorney. As stated in 5.1 and 5.2 above, the Address for Service must be a physical address in Australia.

5.4 No Address for Service

When there is no Address for Service provided on the application form, or it is unclear whether or not such an address has been provided, a deficiency notice should be sent to the applicant’s address, requesting an Address for Service in Australia.

Chapter 6. (reserved)


24

Chapter 6. (reserved)

Chapter 6. Signature and Date - Information deleted as it is no longer required.

Chapter 7. Product Name


25

Chapter 7. Product Name

7.1 Introduction

Regulations 4.04 and 4.05 specify that the application must identify the product or products in relation to which each design is sought to be registered.

7.2 Insufficient Information

The application must identify the product(s), and this identification must be sufficient to enable each product to be correctly classified. If the product name provided is vague or does not appear to relate to a product, then a deficiency notice should be raised.

7.3 Too Much Information

For the purposes of formalities checking, extraneous information such as descriptive matter or embellishment should be ignored, provided that the information allows appropriate classification.

7.4 Representations

The product(s) identified in the application must match those shown in the representations. When the applicant has stated that the application is for a common design in relation to more than one product, that same design must be illustrated in the representations applied to each of the products identified on the application form.

Chapter 8. Section 43


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8.1 Introduction

Section 43 of the Designs Act states that the registrar must refuse to register certain designs. Regulation 4.06 lists the classes of designs which are not registrable.

8.2 Designs which must not be Registered

a. Medals;

b. designs which contain the word “ANZAC”;

c. designs which are prohibited under the Crimes (Currency) Act 1981. For example, any design that is capable of misleading a person into believing that the design is current paper money or Australian prescribed security. This prohibition does not extend to coins;

d. a design which is, or might reasonably be taken to be scandalous (see also 8.3);

e. the Arms or a flag or seal of the Commonwealth or a State or Territory;

f. the Arms or emblems of:

i.A State or Territory

ii.A city or town in the Commonwealth

iii.A public authority of public institution in Australia; and

g. the armorial bearings, flags, State emblems or other signs of another country;

h. a design which is prohibited under the Olympic Insignia Protection Act 1987;

i. a design for an integrated circuit (see also 8.4); and

j. a design which is subject to a prohibition order under s108 of the Designs Act.

8.3 Scandalous designs



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A scandalous design may be considered to contain material which is shocking, defamatory or offensive to the public or an individual’s sense of propriety or morality. If in doubt as to whether a design is scandalous, guidance should be sought from the TMDG Technical Hub. If considered scandalous, a formalities deficiency notice will be sent to the applicant on that basis.

8.4 Integrated Circuit (Microchip) or part of an Integrated Circuit or a mask used for an Integrated Circuit

Designs of integrated circuits or micro-chips within the meaning of the Circuits Layouts Act 1989 are protected under that Act and therefore are not considered to be registrable under the Designs Act.

This exclusion does not apply to circuit board layouts.

Chapter 9. Statement of Newness and Distinctiveness


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Chapter 9. Statement of Newness and Distinctiveness

9.1 Introduction

A statement of newness and distinctiveness is optional. If there is no statement, announced or otherwise on the application, then the application should be taken to have passed this part of the formalities check.

9.2 More than one statement

Occasionally, the applicant may have provided more than one statement of newness and distinctiveness (SoND) or unstructured text that may or may not be intended as a SoND. On these occasions, clarification of what should be recorded should be obtained from the applicant. A letter of this nature will propose what will be recorded in this field at registration should the applicant fail to respond with their specific direction within two months.

Where an application contains a statement with a title relating to the previous Designs Act, such as “Statement of Monopoly” or “Statement of Novelty, it is not appropriate to issue a deficiency notice.

Chapter 10. Convention Details


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10.1 Introduction

Australia is a party to the Paris Convention for the Protection of Industrial Property (Convention). Under the terms of this Convention, a person who has made an application for protection of a design in a Convention country (the basic application) has the right, within six months from the date of the first application in a Convention country, to claim priority of that date in an application in respect of the same design in any other Convention country.

Australia has also made special bilateral arrangements, with a number of other countries, which have the same effect as the Convention. A list of those signatories is available at www.wipo.int.

Claiming convention priority is optional. If there are no convention details listed on the application form then the application should be taken to have passed this part of the formalities check.

Regulation 3.06 provides that a convention application may only be made by:

• the applicant in the basic application; or

• the applicant’s assignee; or

• the legal personal representative of the applicant or of the applicant’s assignee.

10.2 Formalities Requirements

If any convention details are listed on the application form, or a priority document is lodged, check that the following details are on the form:

1. The date the basic application was made in the convention country;

2. The number of the basic application, and

3. The country (or country code) where the basic application was made.

All of these details must be clearly stated on the application otherwise a deficiency notice should be sent.



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10.3 Copies of Basic Applications

A copy of the basic application is not required in order to pass the formalities check prior to registration. If one has been filed, it can remain on file where it can be referred to if examination is requested.

Chapter 11. Excluded Design Details


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11.1 Introduction

An application can be amended under Section 28 to exclude one or more of the designs filed in it. Section 23 of the Act allows applicants to make separate applications for design/s that have been excluded from an initial application.

In relation to applications for designs which have been excluded from an earlier application, Section 23 refers to the initial application in which one or more designs were disclosed. Each time a design application excludes one or more design by way of an amendment under s.28 the designs in that application are taken to have been disclosed to the Office. As a result, if a new application is filed for one or more of these excluded designs (under s.23), the application which has most recently been amended to exclude those designs is taken to be the initial application (as defined in s5).

11.2 Priority Date of Excluded Designs

The priority date of a design, where it has been excluded from an initial application, is the same priority date as it had under the initial application. If one or more designs in the initial application claimed an earlier priority date, for example a convention priority claim, this does not automatically mean that priority date should be accorded to the later filing. Instead, the applicant will generally have to announce its claim to earlier priority on the new application form. The rare exception to this is where it is obvious that a design, as presented in the initial application, claimed an earlier priority date. In those circumstances the earlier date should be recorded against the later filing during the formalities check.

11.3 Status of the Initial Application

If details of the initial application are stated on the application form, firstly check that such a claim can be made. Consult the initial application case file to ensure that, at the time the present application was lodged:

1. the initial application not lapsed or withdrawn, and

2. none of the designs in the initial application been registered or published.

If the initial application fails either of the above checks, then the applicant should be advised that they are not able to claim priority from the initial application.



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11.4 Excluded by Amendment

If the checks at 11.3 are met, check the initial application to determine whether the design has been excluded by amendment. If it does not appear that the design has been excluded from the initial application, a deficiency notice should be sent.

11.5 Not Excluded by Amendment

A design that has been refused in, or withdrawn from, an initial application has not been excluded by amendment.

11.6 Registration / Publication Requests

An application in respect of a design or designs excluded from an initial application must include a request for registration or publication of all of the designs disclosed in the application.

Chapter 12. Registration / Publication Request


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12.1 Introduction

In order to have made it to the formalities check, registration must have been requested for at least one of the designs in an application. It is necessary to consider the timing and circumstances of any request under section 35, either for registration or publication.

12.2 Original Request

When the initial request for either publication or registration is received, care should be taken to identify which designs have been included in the request. The original request may consist of a request for registration of some designs and publication of others. The request might be received with the application, or at any time until six months from the priority date of the application.

Where the applicant has not specified in the request that particular designs are not to be registered, the request to register will apply to all the designs disclosed in the application.

12.3 Subsequent Requests for Registration - Applications in respect of more than one design

Requests for registration made after the initial request was made cannot generally be accepted. The circumstances under which such a request may be accepted are prescribed in regulation 4.02.

12.4 Subsequent Requests for Publication

The above does not apply to requests for publication coming in after the original request. So long as the designs remaining on the application have not lapsed, they can be published.



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12.5 Form of Request

The request should be clearly stated in writing, either on the application form, or in correspondence.

12.6 Excluded Designs

A request for registration or publication must be made in relation to all designs in an application covering an excluded design. The request may be outside of the six month period from priority date, as long as registration/publication was requested for all of the designs in the application at the time of lodgement.

12.7 Further Designs

When, as a result of a formalities objection, a further design is filed and given a new design number in an existing application, it is taken to include a request for registration.

Chapter 13. Designer Name


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Chapter 13. Designer Name

13.1 Introduction

The application form must show the name(s) of the designer(s).

13.2 Who is the Designer?

The designer is the natural person(s) who conceives the design and then reduces it to its visible form. The designer can be one or more natural persons. Companies and other legal entities are not natural persons and therefore cannot be listed as designer names.

It is the Registrar’s preference that the designer(s) be named individually, however it is possible that the creator(s) of the design is not clearly identifiable. This may be the case in a large company where many sections might be involved in making a design or a contracted/assigned company with similar circumstance.

It is undesirable practice to record a company or group rather than the individual name(s) but it is unavoidable in some circumstances. When no designer(s) is identified, the owner or agent should be queried as to why no specific designer has been named. Examples of how the designers could be identified, where the reasons given sound reasonable, include “Members of the Design Team of XXX Pty Ltd” or “Employees of XXX Pty Ltd”.

13.3 Summary

If there is no designer listed, or the designer’s name does not appear to be the name of a natural person, a deficiency notice should be raised.

Chapter 14. Representations


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14.1 Introduction

According to Section 6 of the Act, “representation” means:

“a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen.”

The representations must comply substantially with the formal requirements set out in Schedule 2 of the Regulations. The following is a description of the issues involved in assessing the suitability of representations. It is important at this point to emphasise that any deficiency raised must have its basis in legislation. Unnecessary costs and delays may be incurred by the applicant as a result of raising frivolous objections.

14.2 Product

The representations must show a product. They cannot simply show, for example, the two dimensional design applicable to a T-shirt without showing the T-shirt to which it is applied. An actual physical item must always be shown. Also, the representations cannot show part of a product that has no separate existence e.g. the bowl of a spoon without the handle.

The representations must show the product that is named in the application. If they show something different, a deficiency notice should be raised (see Chapter 7. Product Name).

Where an application claims that a design has indefinite dimensions in a manner that is not permitted by s6(3), it is unable to meet the definition of a product.

If the application is for one design applied to many products (a common design), the representations must show each product named in the application.

14.3 General Requirements for Representations

(a) Size The sheets that representations are presented on should be international sheet size A4. Smaller size sheets should be allowable, but larger are definitely not.



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(b) Separate sheets

Representations must be separate to any other documents filed. For instance, a representation drawn on the application form is not acceptable.

(c) Separate representations

If more than one representation appears on a single page, they should not overlap, as this obscures the detail of the design

(d) Text Writing on representation sheets should be limited to titles for the representations (labelling) and to writing that is part of the actual design.

(e) Multiple designs

In applications containing more than one design, each design should be separately and clearly indicated. Also, a single sheet cannot be used to show more than one design.

(f) Common designs

When an application is for a single design applied to more than one product, it is a requirement that the representations show the design in relation to each product identified in the application. It must be remembered that the design must be shown as applied to more than one product. A chair and a chair with arms are not two different products. The arms of a chair are simply visual features of one product, being a chair. It is a requirement that each product name is reconciled with the corresponding representation.

(g) Extraneous matter

As far as possible, representations should show only the design or designs that are being applied for. If other items are shown there may be some confusion as to what the design is, how many designs are shown, and the appearance of the product may be obscured.

(h) Open, closed, and other configuration changes

Changes in the configuration of the design are quite acceptable. For example: a telephone shown with, and without the receiver on the cradle is still showing the same design. A container shown with the lid on and the lid beside it are also showing the same design.

14.4 Photographs

(a) Lighting / Colour

Photographic representations may sometimes give the impression of showing more than one design. This may be caused by lighting or by the angle from which the photograph is taken. As a general rule if the visual features appear to be the same and minor colour variations could be attributed to such



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environmental factors a deficiency notice should not be raised.

(b) Instant photos

"Polaroid" or other instant type photos should be rejected as they will deteriorate with time and will not leave a permanent record.

(c) Photocopies of photographs

Generally photocopies of photographs are not of sufficient quality for reproduction. Check if the details of the design are still clear after photocopying.

(d) Background and shadows

Photos should be taken against a plain and contrasting background. The design is then more likely to be clearly defined. Strong shadows are likely to confuse important detail of the design.

(e) Mounting When photographic representations are received by ordinary mail the photos should be fixed securely on A4 sized paper. This may be done with double sided tape, ordinary sticky tape, or photo-corners. The paper should be of sufficient strength to support the photos. Any glues or adhesives used should not cause any damage the photographs.

14.5 Drawings

(a) General Drawings of a design should be illustrative. They should show the whole, assembled product. Parts lists and other information required for fabricating the product are not acceptable.

(b) Consistency of views

All views should be checked to see that they are consistent in detail and that nothing additional is shown in one drawing that is not indicated in another. Inconsistencies may indicate further designs.

(c) Colouring/shading Shading is commonly used to indicate curved surfaces, and is quite acceptable. However, excessively dark colouring or shading are likely to confuse important detail of the design, and should be avoided.

(d) Exploded Views An exploded view may be included if it is necessary to illustrate the appearance of parts that could otherwise not be clearly illustrated or if components of the product being illustrated can be separated in normal use e.g. a bottle with cap.

(e) Close-ups Each representation should generally be shown in proper



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proportion to each other representation. Close-ups of parts of the product are permissible so long as they are consistent with the other drawings.

(f) Sketchy Linework used in the drawings should be executed in durable, black, dense, dark, uniformly thick and well-defined lines and strokes. Inconsistent, faint or otherwise sketchy lines are unacceptable.

(g) Section Views Section views may be included as a way of showing the profile of the product eg. internal features of a bottle cap where normal views would not adequately show this. They should be indicated by oblique hatching.

(h) Environmental Views

If the applicant submits an environmental view of their design shown in use, this representation of the design must be clearly labeled as being for environmental purposes only. If such a representation is not clearly labeled, any detail in the representation that is not disclosed in other representations will likely be identified as showing further designs and a deficiency notice will be raised. .

14.6 Specimens

Drawings and photographs are the preferred method of illustrating a design. Specimens of two dimensional products may be acceptable as long as they can be photographed to a standard where all the visual features of the design are clear. If the specimen does not reproduce well, it should be accompanied or replaced by more suitable drawings or photos.

14.7 Amendments

Representations may be amended under Section 28 by deletion of one or more existing representations by total substitution of the representations or by augmentation of the existing representations. The new representation must not alter the scope of the application by the inclusion of matter that was not in substance disclosed in the original application. Refer to Section 28(3).

Chapter 15. Further Designs


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15.1 Introduction

According to Regulation 1.04 where an application shows more designs than is stated on the application form, the application is said to include further designs.

15.2 More than One Design

At lodgment, all of the designs identified by the applicant in an application will be allocated a separate design number. As part of the Registration Formalities check, the formalities officer must ensure that representations for each identified design do not show more than one design. Where there are further designs which have not been identified by the applicant, a deficiency notice must be prepared.

The question of further designs will need to be addressed on a case by case basis, but generally, “variations” and “alternate embodiments” are too different to be considered one design.

15.3 More than One Product (Common Design)

Common designs are those where the same design is shown in relation to more than one product. There is no restriction on how ‘related’ the products sharing a common design need to be, including their overall shape and use. They are not required to be classified in the same Locarno class. However, typically an application for a common design will include products that share a similar purpose, characteristics and are ordinarily on sale together, and intended on being used together. A common design feature is not limited to physical characteristics. In addition to physical similarities, products (which may differ in overall shape) could share a common pattern and/or ornamentation. Although the overall shape of each product may be different, it must be clear that the same design is shown in relation to all the products. Where two products by their very nature cannot strictly share the same overall shape, consideration should be given to the areas that are able to share the same design.

Examples of products which may have differences in overall shape, but in practice often have, and could share the same (common) design include:

• knives, forks and spoons (handle design);



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• screwdriver and hammer (handle design);

• curtains and cushions (pattern and/or ornamentation);

• clothing, footwear and fashion accessories i.e. handbags (pattern and/or ornamentation);

• face washers, hand towels and bath towels (overall shape and appearance);

• car and toy car (overall shape and appearance);

• chocolate bars and blocks of chocolate (shape of, or pattern on, the individual pieces);

• bedside tables, chest of drawers, dressing tables and wardrobes (shape of surfaces, handles, edges and legs).

Representations sharing a common design in respect of any number of products are allowed on the same case record. Remember, however that each of the products shown in the representations must be named on the application form, and vice versa.

15.4 Dealing with Further Designs

If it is established that further designs are in the case file and all of the designs in the application fall within the same Locarno Class, a deficiency notice must be sent, indicating that more than one design has been identified. The applicant has the option to:. The applicant has the option to:

1. amend out the excess design by exclusion or withdrawal, or

2. pay the additional fees, and keep the design/s in the application, or

3. a combination of 1 and 2 above.

If it is established that further designs are in the case file and the designs in the application fall within different Locarno Classes, a deficiency notice must be sent. The applicant should amend the application to delete, exclude or withdraw any designs that do not fall within the same Locarno Class.

15.5 Paid Additional Fees

When additional fees are paid for further designs, a new design number(s) and corresponding design file will need to be created and linked to the application by the lodgment officer.

Chapter 16. Amendments


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16.1 Introduction

Section 28 of the Act deals with amendments to applications.

Amendments under this section can be made to an application any time before registration or publication. Amendments can be made to any document accompanying the application, including the representations.

S28 (3) states that proposed amendments cannot be allowed if the scope of the application is altered by the inclusion of matter that was not in substance disclosed in the original application.

A request to amend an application should be in writing and in accordance with regulation 3.09.

There could be any number of reasons why the applicant requests an amendment.

For example:

• change of ownership in the design

• change in the residential or address for service

• to address deficiencies, so that the case can proceed to registration

• an error in the representations

• an error in wording in parts of the application

16.2 Scope of the Application/Inclusion of Matter

By amending the product name(s) or representations, the scope of the application might be altered. This is especially true when the amendment introduces new matter that was not shown in the application originally.

Very broad examples are given below. Each amendment should be judged individually in terms of the possible change to the scope of the application.

Where an amendment alters the scope of the application by the inclusion of matter which was not originally disclosed (not allowable):



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a) In the product name:

When the applicant requests that the name be amended to include a product or part of a product that has not been shown in the representations. For example:

The original name was "container", and the applicant requests the name to read "Container and components thereof".

If the component parts were not shown in the original representations, the amendment should not be accepted, because the scope of the application would be altered by the inclusion of matter not originally disclosed.

b) In the substitution of new representations

i) In the case where the original representations are so bad (eg photocopied/faxed photographs that appear as a dark mass) that it is impossible to determine what the design is, substitution of new representations could alter the scope because the original design was indiscernible.

ii) When a request to substitute new representations shows that the design in the new representations is not at all similar to the original design, a deficiency notice should be sent to the applicant. In this case, the scope of the application would clearly be altered.

Where an amendment alters the scope of the application but does not include new matter (allowable):

a) In the product name

Where the original name is too general to allow classification (see Chapter 7. Product Name)

i) "textile article" implies any product that has been made of textile material. This should be amended to name the products(s) shown in the representations.

ii) "article of clothing" implies any form of clothing. This could be amended to read "t-shirt".

b) In the substitution of new representations

Where an isolated graphic design has been lodged, a deficiency notice should be sent, noting the fact that the design is not shown in relation to a product (see Chapter 14.5). Amending the representations to show the design in relation to a product or products arguably alters the scope, but, so long as the product name(s) was originally indicated or implied the product(s) now shown, new matter has not been introduced.

Other allowable amendments are those where the scope of application is not affected. They could include amendments to the following:

• The name of the applicant



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• The residential address of the applicant

• Address for service

• Statement of Newness and Distinctiveness

• Convention details

• Excluded design details.

16.3 Amending the Name of the Applicant

Where an amendment would change the name of the applicant substantially, and the rights in the design were not assigned (see section 30 of the Act), a declaration and any other evidence should be forwarded stating and supporting the reasons why the error was made or why the name should be changed.

Before the amendment can be made, the checker should be satisfied that the reasons given on the statutory declaration warrant the amendment being made.

Note: In the case of an application containing more than one design, the applicant name must be the same for all of the designs contained in the application. This may become an issue when a change to the name is requested.

16.4 Amending the Address for Service

Most requests to amend the address for service are taken on good faith by the office, that it is the applicants wish to have the address amended. And, in most cases that is correct. However, there have been cases where a conflict of interest has arisen. In these cases, two addresses for service requests had been received for an application. This is what normally alerts the office to the fact that something is not right. This situation must be clarified before registration. A brief description of two such cases is given below:

1. The address for service was amended from one attorney firm to another. However, correspondence was received from the previous attorney. Correspondence from the new attorney was also received. Both were claiming to be the address for service. The Office asked the attorneys to agree who was to be the address for service. In this instance the original address for service was to remain the address for service for the application and the other address for service was for the assignment that was taking place.

2. Correspondence was received requesting that the address for service be amended as per the request. Shortly after another request was received, accompanying the



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request were copies of a will naming the applicant's wife as the beneficiary. Legally the applicant’s wife is entitled to be the owner and therefore the amendment is allowable. The other request was from the applicant’s mother. She was not entitled to be the owner or agent.

In any case, clarification is necessary.

16.5 When a Formal (Written) Request has been received

Check to see that the following requirements have been met:

• a statement of proposed amendments should accompany the amendment request. Details of the amendment(s) and exactly what is to be amended should be set out on this statement.

• other forms or documents that could accompany a request for amendment are; a substitute application form or substitute representations.

Once the above requirements have been met, carry out the following steps:

1. Consider whether the amendment/s is/are allowable,

2. Check to see that all deficiencies have been addressed and fixed. In the case where they have not, a further notice should be issued. It should state which deficiencies that have been fixed and those that remain. Additional explanation of the deficiency may need to be supplied if they have not already been identified.

3. Check that covering letters are date stamped by this office. This saves confusion especially when more than one lot of representations have been requested to be substituted.

Note: It is good practice to update the formalities worksheet with each requested and allowable amendment, especially when deficiencies have been overcome incrementally. This will ensure that no amendments are missed at registration.

4. When all deficiencies have been fixed, the application can be cleared. The formalities worksheet should indicate this fact.

5. Update the Designs Administration system according to the accepted amendment(s).

6. Amend the representations neatly. Representations that are deleted or replaced should be identified as informal on file.

7. Substituted application forms should be attached to the case file and marked "substitute".

8. If the application/design can be cleared, the registration procedures should be initiated. If the application cannot be cleared, a subsequent report should be prepared.



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16.6 Assignment Requests

If the ownership of the design has been clearly assigned (assignment documents should be enclosed), the case file should be transferred to the assignment officer to process the assignment.

Note: Assignments should be processed before registration, so as to avoid an unnecessary reprint of the registration certificate.

16.7 Amending the Application Documents

Amendments including amendments to representations are recorded on the case file. To find out what amendments have been requested, the correspondence on file should be checked.

Representations

When acceptable representations are lodged, incorporate them into the application documents. All representations that are no longer relevant should be placed in the folder titled "informal".

Chapter 17. Formalities Checking Procedure


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17.1 Introduction

This chapter covers a set of procedures to help a formalities officer develop

methodical, efficient work practices and includes:

• The purpose of the formalities check

• Acceptable first and further deficiency notices

• Using the formalities worksheet

• S.137, Extensions of time

• Ad-hoc correspondence

• Dealing with the clearance of correspondence

17.2 Purpose of the Formalities Check

The purpose of the formalities check is to ensure that any design that is accompanied by a request for registration is also accompanied by enough information to allow it to be entered on the Register.

Step 1

17.3 Obtaining Designs Case Files for Checking

Designs should be checked in order of date of request. If a design requested for registration is part of an application containing multiple designs, be sure to take all of the designs in that application so that the formalities check is able to be performed fully.

It is then the responsibility of the formalities officer to consider all aspects relating to formalities up until the point that the design can be registered.



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Step 2

17.4 Checking Correspondence

All correspondence pertaining to the design should be in the relevant correspondence folder.

Read the correspondence to see if there are matters that will need to be considered as part of the formalities check. A couple of examples of such matters are: a statement of entitlement, or, a letter from this office telling the applicant that we will take some wording in their application to constitute a request for registration.

Examples of amendments between lodgement and prior to formalities are:-

a. Adding a statement of entitlement.

b. Representations that may have to be substituted, deleted or added.

c. Change of address. If the change is made to the applicant’s address then this amendment may be processed along with all the others when the design is cleared, an amendment to the address for service must be processed immediately.

Address for service should be amended on the Designs Administration system as soon as the request is received, providing it is an allowable amendment. (For more information see Chapter 5 of this manual).

Step 3

17.5 Registration Formalities Worksheet

The worksheet is a check list located in the design case file that helps ensure all the relevant formalities have been checked. Begin by recording the following details on the formalities worksheet.

• Details of any allowable amendments and action to be taken.

Correct formalities can be answered Yes or left clear. Incorrect formalities (deficiencies) can be answered No and notes made in the boxes provided.

The worksheet is arranged in the order each item appears to the officer; that is: the classification code, followed by each item on the application form; and finally, the representations.

It is good practice to update the formalities worksheet with each allowable amendment as and when they are made. This will ensure that no amendments are missed at registration.



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Step 4

17.6 Deficiency Notices

The task of writing a deficiency notice is accomplished by using specially written word processing codes. If there are shortcomings in these codes, the formalities officer should suggest changes to those codes.

By using these codes wherever possible, it:

• achieves consistency between different applications and officers

• saves time

• ensures use of plain English

• encourages healthy work practices by reducing time spent at the keyboard.

17.6.1 Order and Numbering of Deficiencies

Each deficiency raised should be numbered consecutively throughout the notice so that the applicant and anyone else reviewing the case can easily identify which deficiency is being referred to. When writing further notices the numbers should continue on from the last report. Where only one deficiency is raised, and it is clearly presented in the notice, numbering the deficiency is optional.

17.6.2 Guidelines for an Acceptable Designs Pre-Registration Formalities Notice

To communicate effectively and achieve an appropriate response there are certain elements a good notice should contain.

1. A deficiency notice should include all of the deficiencies for all of the designs in an application. It should therefore clearly reference all of the design numbers that constitute that application. If the applicant does not overcome the deficiencies (within the allowable time) in just one of the designs, the entire application will lapse.

2. All deficiencies should read clearly. Use the word processing codes where applicable, and always use plain English. Target the notice to the applicant. The notice must be so clear and comprehensive that the applicant is left in no doubt as to the deficiency being raised.

3. It may also be appropriate in certain circumstances to indicate how the applicant might amend the application so that the design can be registered. Explanations should be given, in broad terms of how to propose amendments to correct the deficiencies and what amendments are allowable.

4. Separate different deficiencies, e.g. raising the lack of a statement of entitlement should be noted separately to the fact that only one set of representations has been supplied.



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5. If any deficiency is based on an assumption, then clearly state that assumption. E.g. Your application appears to show more designs than stated on your application form.

6. Contact name and telephone number is given.

7. Date of the notice is shown. So as not to disadvantage the applicant, the date of the notice should be one business day ahead of the day that the notice is sent to despatch.

8. The time within which a response is due should be clearly stated.

17.6.3 Final Step

After completing the report all the above "elements" should be checked, and the notice sent. A copy of the notice should also be placed on the case record.

17.6.4 Further Notices

"Furthers" is the term used for applications that have had a deficiency notice issued. As these cases have time limits in which to correct deficiencies, the officer should see how close they are to the final date.

The applicant has 2 months from the date of the first notice in which to overcome any objections raised. After that period, applications automatically lapse. If the applicant wishes to continue with the application a request for an extension of time under S137 of the Designs Act will have to be lodged.

The officer should endeavour to process all furthers within the week they are received. However, applications nearing the final date should be processed as soon as possible after receipt.

17.6.5 Writing Further Notices

These are produced in the same manner as first notices. If a further report is raised, the officer should clearly indicate which deficiencies have been fixed, and those that have not.

The only major difference will be when completing the bottom paragraph regarding the final date. Where the applicant has requested a faxed or emailed response, it should be provided along with a confirmation copy sent by mail.

Further notice - within the 2 month time limit for reply.

The officer will have to inform the applicant when this time limit expires. The date is taken from the date of the first notice. If the date of the first notice is 25th August 2014 then the Final date will be 25th October 2014 i.e. 2 months after the issue date of the first Reg 14 notice.

In the case of further notices after an application has lapsed, refer to paragraph 17.8 below.

17.6.6 Missed Deficiencies



51

If a deficiency was missed and not raised in the first notice it should be raised in a further notice. Suitable apologies for the omission should be made.

Where appropriate, a free extension of time under sub-section 137(1) will be granted.

Step 5

17.7 Clearing for Registration

If no deficiencies are found or have been fixed by amendment, then the case may be cleared for registration. The designs record should be amended on the Designs Administration system if necessary. The completed formalities worksheet should be signed, dated and included in the case file.

Other Matters

17.8 Section 137

Various sections of the Designs Act and Regulations have prescribed times in which particular actions must be completed or performed. An applicant or owner can apply for an extension of time under s.137 to extend any of these prescribed time limits.

The situations that are likely to arise in formalities are:-

a. When an application is approaching the final date for a response and still wishes to continue with the application

b. If an application has lapsed because it has passed the reply date and the applicant wishes to continue with the application

c. If the applicant wishes to extend the date for lodging an application covering excluded designs

d. If the applicant wishes to claim convention priority where they have lodged their application more than six months after lodging the convention application.

Generally it will be the applicant or their attorney who will initiate an application for an extension of time to register an application before the application lapses, though the possible need for such an extension may be suggested by the formalities officer in a notice (if a notice is being sent).



52

Similarly, applications for extension of time to lodge divisional and convention applications will most often be initiated by the applicant or their attorney. The formalities officer may advise the applicant that such extensions are available if it is likely that the applicant would not be familiar with such provisions.

Where a formal application for extension has been made (ie. where all relevant documents and fees for the extension have been lodged) the application should be passed to the appropriate delegate for approval.

17.8.1 Procedure for Lapsed Applications

Where the applicant has made a response and obviously wants to continue with the application but the application has lapsed, the following procedure should be followed:

Section 41 Notices.

(a) A notice should be drafted. The first objection raised should be under the heading EXTENSION OF TIME using the word processing codes. Any further deficiencies may be raised in the same notice; or

(b) At the end of the notice, note that the final date for a response has passed.

17.9 Dealing with Ad-Hoc Letters

Sometimes correspondence is received before the Formalities check occurs or is finalised. The Formalities officer should check the case file to ensure all correspondence is responded to and actioned appropriately.

Chapter 1 - Citation Index

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 21 March 2016

iii

Table Of Contents D01. Citation Index ............................................................................................................... 1

Amendments ..................................................................................................................... 1

Assessing Newness & Distinctiveness............................................................................... 1

Assignment, etc. of Designs .............................................................................................. 3

Examination Process ......................................................................................................... 4

Extension of Time - s.137 .................................................................................................. 4

Identifying the Design ........................................................................................................ 7

Prior Art Base .................................................................................................................... 9

Priority Dates ................................................................................................................... 10

Publication, File access ................................................................................................... 10

Ownership Disputes ........................................................................................................ 11


1

D01. Citation Index

Amendments

Allowabililty - Inclusion of Matter not in Substance Disclosed

AMP Incorporated v Commissioner of Patents (1974) AOJP 3224

D10.4

Chris Ford Enterprises Pty Ltd v. B. H. & J. R. Badenhop Pty Ltd (1985) 4 IPR 485

D10.4

Ethyl Corporation's Patent (1972) RPC 169 D10.4

World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114

D10.4

Allowability - Increasing Scope of the Design Registration

Distillers Co. Ld.'s Application (1953) 70 RPC 221

D10.5

Amending a Statement of Newness and Distinctiveness

Reckitt Benckiser Inc [2008] ADO 1 D10.2.2 D10.6

Time for Making S.28 Amendments

Reckitt Benckiser Inc [2008] ADO 1 D10.2.1

Voluntary Requests to Amend Under s.28


Assessing Newness & Distinctiveness

Ambit Statements of Newness and Distinctiveness

Reckitt Benckiser Inc [2008] ADO 1 D09.4.3.1

Assessing Declaratory Evidence to Establish the Standard of the Informed User

Apple Computer Inc [2007] ADO 5 D09.4.6.4

LED Technologies v Elecspess [2008] FCA 1941

D09.4.6.4

Review No 2 v Redberry Enterprises [2008] FCA 1588

D09.4.6.4

External Factors Eredu v Arrmet (OHIM ref: ICD010000024; D09.4.5.2



2

Apr 27 2004

Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8

D09.4.5.2

Inferring the Impression - Hidden Perspectives


D09.3.2

Presence of Extra Visual Features in Citations


Reckitt Benckiser (UK) Ltd [2008] ADO 6 D09.3.1

Similarities and Differences Astra Zeneca AB [2007] ADO 4 D09.4.1

Icon Plastics Pty Ltd [2007] ADO 2 D09.4.1

Sportservice Pty Ltd [2007] ADO 6 D09.4.1


D09.4.1

Standard of the Informed User Aktiebolaget Design Rubens v Backlund, ICD 461

D09.4.6.3

Apple Computer Inc [2007] ADO 5 D09.4.6.3

Ferrari S.P.A v Dansk Supermarket A/S R0084/2007-2, 25 January 2008

D09.4.6.3


D09.4.6.3

Mars UK Limited v Paragon Products BV, Case R1391/2006-3, 25 January 2008

D09.4.6.3

Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8

D09.4.6.3



D09.4.6.3

Woodhouse UK v Architectural Lighting Systems [2006] RPC 1

D09.4.6.3

State of Development of the Prior Art Base for the Design

Caroma v Technicon [2008] FCA 1465 D09.4.2

Dart v Décor (1989) 15 IPR 403 D09.4.2

Firmagroup v Byrne & Davidson 9 IPR 353 D09.4.2

D01. Citation Index


3

Statements of Newness and Distinctiveness


Subject-Matter Issues Microsoft Corporation [2008] ADO 2 D09.1.1

Test for Distinctiveness Dart v Decor [1989] AIPC 90-569 D09.3


D09.3

Wanem v Tekiela (1990) 19 IPR 435 D09.3

Woodhouse UK v Architectural Lighting Systems [2006] RPC 1

D09.3

Test for Newness LED Technologies v Elecspess [2008] FCA 1941

D09.2

Assignment, etc. of Designs

Assignee Must be a Person Purex Corporation Ltd v Vanguard Trading Co [1965] 112 CLR 532

D12.2.2.3

Assignment by a Minor Chaplin v Lesley Frewin (Publishers)Ltd (1966) Ch 71

D12.2.2.9

D'Ambigou, Andrews v Andrews (1880) 15 Ch D 222

D12.2.2.9

Bankruptcy Radich v Bank of New Zealand (1993) 45 FCR 101

D12.6.2

Reilly v Commissioner of Patents 36 IPR 314

D12.6.2

Ceased Designs Sanofi's Petition for Extension of Term (1981) 51 AOJP 2142

D12.2.2.1

Usines de Melle's Patent (1954) 91 CLR 42 D12.2.2.1

Consequence of Not Registering

Martin Engineering Co v Matflo Engineering Pty Ltd (1987) AIPC 90-430

D12.1.2

Stack v Brisbane City Council 32 IPR 69 D12.1.2



4

Effect of Registration Stack v Brisbane City Council 32 IPR 69 D12.1.1

Entitlement of Later Registered Owner

George Stack v State of Queensland [1996] 739 FCA 1

D12.2.2.6

Errors in the Assignment Document

Westpac Banking Corp v Dawson (1990) 8 ACLC 681

D12.2.2.2

Knowingly or Recklessly Making False Entries

Reed (Alber E) & Co Ltd v London and Rochester Trading Co Ltd [1954] 2 Lloyd’s Rep 463

D12.1.3

Registration of Other Interests Haslett v Hutchinson 8 RPC 457 D12.3.3

Stewart v Casey 9 RPC 9 D12.3.3

Retrospective Assignments, Constructive Trusts

Black & Decker v GMCA (No 2) [2008] FCA 504

D12.2.2.10

The University of Sydney v ResMed Ltd (No 2) [2008] FCA 1969

D12.2.2.10

Examination Process

Being 'Satisfied' Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1

D03.9.1

Sportservice Pty Ltd [2007] ADO 6 D03.9.1

Intention to Certify British Sky Broadcasting v Registrar of Trade Marks 58 IPR 216

D03.13

Interface with Court Proceedings

Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126

D03.12

Data dot v Alpha MicroTech 59 IPR 402 D03.12

Novartis v Bausch & Lomb 62 IPR 71 D03.12

Extension of Time - s.137

D01. Citation Index


5

Advertisement of Extension Kimberly-Clark Corp v Proctor & Gamble Co, (1992) AIPC 90-869

D11.6.2

Balance of Factors Including Full and Frank Disclosure

Kimberly- Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569

D11.3.5

Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470

D11.3.5

Beneficial Nature of Section 137 Chalk v Commissioner for Superannuation (1994) 50 FCR 150

D11.3.1

Danby Pty Ltd v Commissioner of Patents and Another 12 IPR 151

D11.3.1

Norman Stibbard v The Commissioner of Patents 7 IPR 337

D11.3.1


D11.3.1

Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367

D11.3.1

Burden of Proof Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470

D11.3.2

Change of Ownership Reilly v Commissioner of Patents 36 IPR 314

D11.4.2

The University of Newcastle Research Associates Limited [2001] APO 64

D11.4.2

Circumstances Beyond Control Abbott & Lamb Pty Ltd v. Registrar of Trade Marks (1991) AIPC 90-806

D11.3.6

Board of Control of Michigan Technological University v. Deputy Commissioner (1982) AIPC 90-005

D11.3.6

Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144

D11.3.6

Reilly v Commissioner of Patents 36 IPR 314

D11.3.6

Rohrmoster v. Registrar of Trade Marks 7 IPR 551

D11.3.6



6

Solar Mesh Pty Ltd v Commissioner of Patents (1995) AIPC 91-138

D11.3.6

Vrubel v Upham 36 IPR 220 D11.3.6

Delay Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470

D11.5.5

Error Must Be Causally Linked to Failure to do Relevant Act


D11.3.4

Error or Omission by the Registrar

Chalk v Commissioner for Superannuation (1994) 50 FCR 150

D11.2

Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144

D11.2.1 D11.2.2

Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals Inc v Amgen, Inc [1997] APO 69

D11.2.1

R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441

D11.2.1 D11.2.2

Extensions Granted Under the Designs Act 1906

Ford Motor Company of Australia Ltd v Stephen Campbell of All Crash Parts Pty Ltd [2006] ADO 1

D11.9.2

Harrison v Theo [1998] ADO 2 D11.9.2

HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12; 38 IPR 121

D11.9.2

Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3

D11.9.2

Nature of an Error or Omission G S Technology Pty Limited v Commissioner of Patents 63 IPR 9

D11.3.3

G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391

D11.3.3


D11.3.3

Total Peripherals Pty Ltd v IBM & Commissioner of Patents, (1998) AATA 784

D11.3.3

D01. Citation Index


7

Protection and Compensation Arrangements

Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3

D11.9

Protection Provisions Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470

D11.5.6

Registrar's Discretion A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213

D11.5.1

British Sky Broadcasting v Registrar of Trade Marks 58 IPR 216

D11.5.4

Chalk v Commissioner for Superannuation (1994) 50 FCR 150

D11.5.1

Comcare v A'Hearn (1993) 119 ALR 85 D11.5.1

Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243

D11.5.1

Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 187 ALR 117

D11.5.4

New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48

D11.5.1


D11.5.1

Renewal Due Before Design Restored

G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28

D11.7.3

International Business Machines Corporation v Total Peripherals [2002] APO 44

D11.7.3

Identifying the Design

Any Thing That is Manufactured or Hand Made

Altoweb (2002) 55 IPR 656 D04.3.2

Application by TDK Electroniks Co Ltd (1983) 1 IPR 529

D04.3.2



8

Littlewoods Pools Ltd's Application (1949) 66 RPC 309

D04.3.2

Colour as a Visual Feature Review No 2 v Redberry Enterprises [2008] FCA 1588

D04.4.6

Smith, Kline & French Laboratories Ltd’s Design Application [1974] RPC 253

D04.4.6

Colour as used in Representations


Reckitt Benckiser N.V [2008] ADO 3 D04.4.6.1


D04.4.6.1

Design in Relation to a Product Clarke's Registered Design (1896) 13 R.P.C. 351

D04.2

Drafting Styles Review No 2 v Redberry Enterprises [2008] FCA 1588

D04.5.1

Effect of Other Designs on Interpretation

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 21 ALR 1

D04.1.2

Pfizer Inc v Commissioner of Patents [2005] FCA 137

D04.1.2

Prestige Group (Australia) Pty Ltd v Dart Industries Inc [1990] FCA 281; 19 IPR 275

D04.1.2

Features not Otherwise Visible Apple Computer Inc [2007] ADO 5 D04.6.1.8

Functional Purpose Firmagroup v Byrne & Davidson 9 IPR 353 D04.4.4

Indefinite dimensions Bondor v National Panels 23 IPR 289 D04.3.5

Brisbane Aluminium v Techni Interiors 23 IPR 107

D04.3.5

Internal Features as Visual Features

Ferrero’s Design [1978] RPC 473 D04.4.5

Gramaphone Company Limited v Magazine Holder Company (1910) 27 RPC 152

D04.4.5

Nature of Representations Sportservice Pty Ltd [2007] ADO 6 D04.5.2

Role of a Statement of Newness and Distinctiveness


D01. Citation Index


9

Unclear Representations LED Technologies v Elecspess [2008] FCA 1941

D04.5.3

LJ Fisher v Fabtile Industries (1978) 1A IPR 565

D04.5.3

Variable Visual Features Reckitt Benckiser (UK) 76 IPR 781 D04.4.3

Visual Feature - Shape, Configuration, Pattern and Ornamentation

Kestos v Kempat Ld (1936) 53 RPC 139 D04.4.2

Rollason's Registered Design (1898) 15 RPC 441

D04.4.2

What is a Product Microsoft Corporation [2008] ADO 2 D04.3

Prior Art Base

Applied Industrially Safe Sport v Puma 4 IPR 120 D07.6.3.5.3

Artistic work Burge v Swarbrick [2007] HCA 17 D07.6.3.2

Half-Court Tennis v Seymour (1980) 53 LFR 240

D07.6.3.2

Corresponding Design Norm Engineering v Digga Australia [2007] FCA 761

D07.6.3.3

Water Recreations v Fairmile 42 ALR 273 D07.6.3.3

Designs Disclosed in Applications

Reckitt Benckiser (UK) Limited [2008] ADO 5

D07.4

Disclosures to the Commonwealth, a State or a Territory

Icon Plastics Pty Ltd [2007] ADO 2 D07.5.3

Stack v Brisbane City Council 32 IPR 69 D07.5.3

Establishing Publication Date E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934

D07.3.4

Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666

D07.3.4

Exhibitions Steel & Co Ltd's Application (1959) RPC 411

D07.5.1



10

Exhibitions - Official or Officially Recognised

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869

D07.5.1.1

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142

D07.5.1.1

Radburg Pty Ltd v Chiropedic Bedding Pty Ltd [2008] HCATrans 412 (5 December 2008)

D07.5.1.1

General Information LED Technologies v Elecspess [2008] FCA 1941

D07.1

Previous use with Consent Grundt v Great Boulder Pty Gold Mines Ltd [1937] 59 CLR 641

D07.6.3.5.4

Prior Publication in a Patent Specification or Design

Water Recreations v Fairmile 42 ALR 273 D07.6.2.3

Publicly used in Australia Seiller's Application, [1970] RPC 103 D07.2

Unauthorised Disclosures Allen Hardware Products v Tclip [2008] ADO 8

D07.5.2

Priority Dates

Convention Applications Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142

D06.2.1

Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367

D06.2.1

Requirements of the Priority Document

La Soudure Electrique Autogene S.A.'s Application, (1939) 56 RPC 218

D06.2.5.1

Poly-Resin Products Ltd.'s Application, (1961) RPC 228

D06.2.5.1

Publication, File access

D01. Citation Index


11

Precedent Magee v Farrell (1986) AIPC 90-296 D14.4.3


D14.4.3

Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished)

D14.4.3

Who Access is Granted To Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088

D14.4.4

Davies v Eli Lilly & Co. (1987) 1 All ER 801 D14.4.4

Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust [2007] ADO 7

D14.4.4

Ownership Disputes

Application by Entitled Persons After Revocation

R v Quinn; Ex parte Consolidated Food Corporation [1977] HCA 62; (1977) 138 CLR 1

D13.5

Cross-examination of Witnesses Airsense Technology Ltd v Vision Systems Ltd 62 IPR 409

D13.4.2.4

Airsense Technology Ltd v Vision Systems Ltd 62 IPR 413

D13.4.2.4

Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1

D13.4.2.4

Disputes Associated with Recording Assignments


D13.3

Hearing and Decision Allen Hardware Products v Tclip [2008] ADO 8

D13.4.2.5

Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241

D13.4.2.5



12

George Stack v Davies Shephard Pty Ltd and GSA Industries (Aust) Pty Ltd [1996] APO 1; (1996) AIPC 91-241; 34 IPR 117

D13.4.2.5

Overview of Ownership Disputes Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1

D13.1

Procedures for Allowing Inspection of an Unpublished Design Application

Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088

D13.2.2.1

Davies v Eli Lilly & Co. (1987) 1 All ER 801 D13.2.2.1

Magee v Farrell (1986) AIPC 90-296 D13.2.2.1


D13.2.2.1

Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished)

D13.2.2.1

Process for Handling s.52 Requests

Somnomed Ltd v Commissioner of Patents [2006] FCA 765

D13.4.2

Section 29 Disputes Between Co-Applicants

Application by O’Neill and StGeorge 30 IPR 637

D13.2.1

Application by Willems, Fritz, et al 21 IPR 569

D13.2.1

Carroll v Harper 1 IPR 537 D13.2.1

Lanfranconi's Applications 53 RPC 317 D13.2.1

Milward-Bason and Burgess (1988) AIPC 90-475

D13.2.1

Novocretes Ltd.'s Application 43 RPC 171 D13.2.1

R&S Trailers Ltd.'s Application 60 RPC 7 D13.2.1

Stephenson v Donner 24 IPR 108, (1992) AIPC 90-888

D13.2.1

Tribe v Ranken 1 IPR 561 D13.2.1

Typical Disputes Allen Hardware Products v Tclip [2008] ADO 8

D13.4.3

D01. Citation Index


13

Collymore and Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2008] ADO 9

D13.4.3

Commonwealth Scientific and Industrial Research Organisation et al [1995] APO 16; 31 IPR 67; (1995) AIPC 91-171

D13.4.3

Eddie Kwan, John Pierre Le Sands and Paul N Van Draanen v The Queensland Corrective Services Commission and The Queensland Spastic Welfare League [1994] APO 53; (1994) AIPC 91-113; 31 IPR 25

D13.4.3


D13.4.3

Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO 1

D13.4.3

Spencer Industries v Collins [2003] FCA 542, 58 IPR 425

D13.4.3

D02. Designs Examination Quality Standards

Table Of Contents D02 Designs Examination Quality Standards ........................................................................ 1

D02 Designs Examination Quality Standards ........................................................................ 1

PQS 1 - A correct search strategy is adopted .................................................................... 2

PQS 2 - All relevant grounds for revocation are correctly taken ......................................... 3

PQS 3 – Reports are comprehensive and informative ....................................................... 3

PQS 4 - Written formalities are complete and correct ........................................................ 4

Designs .......................................................................................................................... 5

Oppositions and Hearings .............................................................................................. 5

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 01 February 2016

iii



IP Australia recognises that the services it provides must comply with the requirements of the Designs Act 2003 and Regulations, and meet expectations of quality from its customers. IP Australia's Quality Policy is available on the IP Australia website.

To ensure that customer's expectations are met, a set of quality standards for designs examination has been developed using comments from our customers and in consultation with our staff.

The quality standards apply to all aspects of designs examination carried out by IP Australia and provide us with benchmarks against which to assess the quality of these aspects of the examination process.

Achieving the standards for designs examination will ensure that the resulting rights are robust and are entitled to a presumption of validity, which meets the customer's expectations. The Manual is fundamental to implementing the quality standards but must always be considered as a guide and interpreted in the context of the Act, Regulations and the relevant decisions of courts and tribunals.

The quality standards support IP Australia's commitment to providing high quality designs services for the benefit of Australia. These standards will be continually refined in the light of experience and comments from our customers.

The Product Quality Standards (PQS) are categorised according to the extent to which they affect the validity of the IP Right. By categorising the PQS under different tiers, a scale of significance has been applied to each component of work, whereby searching and raising objections relating to the validity of an IP Right are most important. Each Standard has attributes that have been grouped together to allow an assessment of compliance to that Standard. The overall quality of a product is defined by one or more PQS depending on the nature of the product.

Tier 1 category (i.e. critical) includes PQS that relate to substantive matters which would adversely affect (or have the potential to affect) the validity of the IP Right.

Tier 2 category (i.e. important) includes PQS that relate to matters which would require a considerable amount of rework and/or inconvenience to the owner or IP Australia, but would not materially jeopardise the validity of the IP Right.

Tier 3 category (i.e. minor) category (i.e. minor) includes PQS that relate to matters which are important in terms of the quality of the product.

The Product Quality Standards are to be read in consideration with the practices and procedures detailed in the Designs Examiner’s Manual. The Product Quality Standards do not define practices and procedures. The Designs Examiner’s Manual details practices and procedures and the Standards assess adherence to those practices and procedures.


1


For a product to comply with a Standard, it must comply with all the relevant attributes defined for that Standard. Conversely, if the product is non-conforming to at least one of the attributes, it will be deemed not to conform to that Standard.

The Product Quality Standards will be reviewed regularly and/or updated as required in order to reflect the appropriate product quality attributes. A printer-friendly A3-sized approved version of the PQS can be found by clicking on the heading below.

Product Quality Standards (Printable Word Version)

Tier 1

PQS 1 - A correct search strategy is adopted

PQS 2 - All relevant grounds for revocation are correctly taken

Tier 2

PQS 3 – Reports are comprehensive and informative

Tier 3

PQS 4 - Written formalities are complete and correct

NOTE:

1. All relevant Standards apply to all reports at all stages of prosecution. New relevant grounds for revocation must be raised in further reports if those relevant grounds for revocation were missed in a previous report, or if the circumstances have changed.

2. Grounds for revocation and relevant amendments must be in accordance with the Designs Act and Regulations, and apply Office practice defined in the Designs Manual of Practice and Procedure and relevant practice guidelines.

TIER 1: includes Product Quality Standards (PQS) that relate to substantive matters which would adversely affect (or have the potential to affect) the validity of the IP Right.

PQS 1 - A correct search strategy is adopted

1.1 Effective use is made of available search results

1.1.1 Effective use is made of available search results including submissions and/or previous examinations.

1.1.2 Given the availability of these search results, further searches are conducted by the examiner if the earlier search is clearly inadequate.


2


1.2 Search strategy is appropriate

1.2.1 Field and scope of the search strategy is appropriate.

1.2.2 Search terms and operators are appropriate.

1.2.3 Relevant databases are consulted.

1.3 Documentation on file

1.3.1 Search strategy is conducted and evident on case file

PQS 2 - All relevant grounds for revocation are correctly taken

2.1 Grounds for Revocation

2.1.1 Sections 5, 6, 7 and 8: design meets subject matter requirements.

2.1.2 Section 16(1): design is new.

2.1.3 Sections 16(2) and 19: design is distinctive.

2.1.4 Section 43 and Regs 4.06 and 5.02: designs subject to refusal.

2.2 Amendments

2.2.1 Amendments to overcome grounds for revocation are assessed or applied appropriately.

TIER 2: includes Product Quality Standards (PQS) that relate to matters which would require a considerable amount of rework and/or inconvenience to the owner or IP Australia, but would not materially jeopardise the validity of the IP Right

PQS 3 – Reports are comprehensive and informative

3.1 Reports clearly state and explain any issues being raised or maintained:

3.1.2 Sound reasoning is given as to why the ground(s) for revocation are appropriate.

3.1.5 Images and publication details of any cited prior art are provided.

3.1.6 Appropriate options are provided without inappropriately dictating a specific action.


3


3.2 In the case of further reports, all outstanding matters are addressed, all submissions are acknowledged, and responded to appropriately

3.3 Record of Reasoning

When an examiner has decided to issue a clear report and:

a. The reason for doing so is not clear from the file itself, and/or

b. The examination included material provided under s69(1),

the examiner has:

3.3.1 Recorded details of any additional searches or material that assisted in the decision,

3.3.2 Included on the file details of the reasons for the decision; and

3.3.3 Where the reasons deal with a question of distinctiveness, included a written assessment of the factors set out in s19.

TIER 3: includes Product Quality Standards (PQS) that relate to matters which are important in terms of the quality of the product.

PQS 4 - Written formalities are complete and correct

4.1 Reports are presented professionally

4.1.1 Reports are free from frequent or serious spelling, typographical or grammatical mistakes.

4.1.2 Reports are free from inconsistencies.

4.1.3 Format and details of the report are correct.

4.1.4 The appropriate word processing codes are used.

4.1.5 Reports are written in plain English and first person.

4.1.6 Reports are structured with appropriate headings and subheadings.

4.2 Forms and templates filled out correctly

4.2.2 Search results are annotated appropriately.

4.2.5 Relevant sections of the search worksheet are completed, correctly showing an appropriate search strategy and directions taken.


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4.3 Complete and correct administrative actions

4.3.3 Database and case file systems are updated correctly.

4.3.4 Search strategy is attached to file (not including requirements covered by 1.3.1).

4.3.5 Records of conversations relevant to the examination outcome of the application are recorded on file.

4.3.6 Email correspondence relevant to the examination outcome of the application are attached to file.

Further information about IP Australia’s commitment to quality is found in the Quality Management Systems Manual. Quality Management Systems Manual.

Within the Quality Management Systems Manual is the IP Australia Quality Manual. Included at 5.4.1 are the Quality Objectives for the Trade Marks and Designs Group. These have been reproduced below:

Designs


Designs reports over 3rd will be less than 5% of total reports. <5%

We will examine and issue a report on your registered design within 13 weeks of receiving your request for examination.


We will respond to correspondence relating to the examination of your design application within 20 working days of receiving the correspondence


We will undertake a formalities check of your design application within 8 weeks of receiving a request for registration.


Oppositions and Hearings


We will issue our decision within 12 weeks of holding a hearing, unless we receive further submissions or evidence.



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Chapter 3 - Examination Process

Table Of Contents D03. Examination Process .................................................................................................... 1

D03 Examination Process ..................................................................................................... 1

D03.1 Overview .................................................................................................................... 2

D03.1.1 Certificate of examination, and ‘certified’ .............................................................. 2

D03.2 Requesting examination - requirements...................................................................... 4

D03.3 Who may request examination? ................................................................................. 6

D03.4 Which Designs may be examined? ............................................................................. 7

D03.5 Court proceedings ...................................................................................................... 8

D03.6 Handling concurrent requests for examination ............................................................ 9

D03.7 Handling requests for examination when a Certificate of Examination has previously issued ................................................................................................................................. 10

D03.8 Further reports .......................................................................................................... 11

D03.9 Being 'satisfied' ......................................................................................................... 13

D03.9.1 Satisfied ............................................................................................................. 13

D03.9.1.1 ‘Satisfied’ as to prior art ............................................................................... 14

D03.9.2 Not satisfied ....................................................................................................... 15

D03.10 Period for completion of examination ...................................................................... 17

D03.10.1 Last-minute responses; time for filing a request for hearing ............................ 17

D03.11 Withdrawal of request for examination .................................................................... 19

D03.12 Interface with Court Proceedings ............................................................................ 20

D03.13 Intention to Certify .................................................................................................. 22

D03.14 Material provided by a 3rd party.............................................................................. 24

D03.15 3rd Party Initiated Examinations ............................................................................. 27

Background ..................................................................................................................... 27

Pre-examination processes ............................................................................................. 27

Initial examination processes ........................................................................................... 27

First adverse report ......................................................................................................... 27

Further adverse report ..................................................................................................... 28

Clear report ..................................................................................................................... 28

Annex A - 3rd Party Examination Flowchart..................................................................... 29

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 January 2016

iii

D03. Examination Process

D03.16 Revocation during Examination .............................................................................. 31

D03.17 Expedited Examination ........................................................................................... 32


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D03 Examination Process

1. D03.1 Overview

2. D03.1.1 Certificate of examination, and ‘certified’

3. D03.2 Requesting examination - requirements

4. D03.3 Who may request examination?

5. D03.4 Which Designs may be examined?

6. D03.5 Court proceedings

7. D03.6 Handling concurrent requests for examination

8. D03.7 Handling requests for examination when a Certificate of Examination has previously issued

9. D03.8 Further reports

10. D03.9 Being 'satisfied'

11. D03.9.1 Satisfied

12. D03.9.2 Not satisfied

13. D03.10 Period for completion of examination

14. D03.10.1 Last-minute responses; time for filing a request for hearing

15. D03.11 Withdrawal of request for examination

16. D03.12 Interface with Court Proceedings

17. D03.13 Intention to Certify

18. D03.14 Material provided by a 3rd party

19. D03.15 3rd Party Initiated Examinations

20. D03.16 Revocation during Examination


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D03.1 Overview

Examination of a Design occurs after the Design has been registered. The examination is in respect of whether the design is a ‘registrable design’ [s.15, from s.65(2)(a)], and whether any of the grounds referred to in s.43(1) apply to the design [Reg 5.02 and s.65(2)(b)].

When examination has been requested, an examiner will examine the design. This examination will include a search in respect of newness and distinctiveness, and will consider any material provided by the person requesting the examination.

If the Registrar is satisfied that a ground for revocation has been made out, an examination report will be issued setting out the grounds of revocation [s.66(2)]. The registered owner may respond to that report – either by making amendments to the Register to remove the ground for revocation, or providing arguments contesting the examination report. If a request to amend is filed, the Registrar will then reconsider the design as if the amendments have been made. In principal, there is no limit to the number of examination reports that may issue.

If the Registrar is satisfied that a ground for revocation has not been made out, or would be removed if proposed amendments are allowable and were made, examination is ‘completed’. The relevant parties are notified that the Registrar intends issuing a certificate of examination. If no party then seeks to be heard, a certificate of examination will issue [s.67].

If the Registrar has issued an examination report, and the examination has not been completed within the relevant time (normally 6 months from the date of the first examination report, but see reg 5.04), the registration of the Design ceases [s.48(1)(a)]. However an extension of time under s.137 is potentially available to obtain further time for completion of the examination.

If the Registrar has issued an examination report, and either

i. the owner contests the grounds of revocation by requesting a hearing; or

ii. the Registrar sets a hearing in respect of the examination

and the Registrar is subsequently satisfied that a ground for revocation has been made out, the registration of the Design may be revoked. [s.68]. Note that the time for completion of examination cannot be extended by way of s.137 after revocation has occurred.

D03.1.1 Certificate of examination, and ‘certified’

The end result of examination is the issuance of a Certificate of examination. This certificate is a prerequisite for the owner commencing any form of court proceedings for infringement [s.73(3)(b)] or revocation [s.93(2)], applying for a compulsory licence [s.90(2)], various applications under the crown use and acquisition provisions [s.98(3), 101(2), 102(5), 106(5)], and applying for rectification of the Register [s.120(5)]. It also has a particular significance in the context of threats [s.77(3), 78(a)].

Note that a certificate of examination is automatically revoked if, following a subsequent request for examination, the design ceases for failure to complete that examination within the prescribed time [S.48(4)].


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Where a certificate has been issued, it is common for the associated matter to be referred to as having been certified. In this respect, the certificate of examination relates to the fact that examination has occurred – and nothing more. In particular, a certificate of examination does not constitute an assertion by the Registrar that the design is definitely a registrable design under the Designs Act.


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D03.2 Requesting examination - requirements

The requirements for requesting examination are:

• The request must be filed in accordance with the approved form. While it is preferred that requestors use a form that has been ‘pre-approved’ by the Registrar, other forms may be used as long as they contain the information required by the Registrar.

• A fee is payable by the person requesting the examination. The fee is due on the day of filing the request. If the fee is not paid, an ‘Invitation to pay’ will issue. The requestor will have 2 months to pay that fee.

• If the requestor is the design owner and the fee is not paid within the two month period, the design ceases – reg 11.04.

• If the requestor is a third party and the fee is not paid within the two month period, the request for examination is taken as not being filed – Reg 11.06.

Consequently, no action will occur in relation to a request for examination until such time as the relevant fee has been paid.

• The request may contain material in relation to the newness and distinctiveness of the design [see s.64(2)].

• If the request if filed by a third party, any such material must be provided in duplicate [r5.01(b)]– with the Registrar sending one copy to the owner.

• Where the requestor only provides a single copy of that material, the Registrar may treat the request as not being in accordance with the approved form – and act under regulation 11.27(3)(a) to return the documents to the requestor. It may be assumed that the Registrar will return the documents unless the amount of material to be copied is very small.

• Similarly, if the copy of the material that is provided is of poor legibility – the Registrar may act under regulation 11.27(3)(a) and return the documents to the requestor. Alternatively the Registrar may treat the request as having been filed, and examine on the basis of the material supplied to the extent that the disclosure in those documents can be clearly identified.

• A fee is payable by the owner, if a third-party requests examination Where a third party has requested examination, the request and any accompanying material is forwarded to the owner. The owner has two months from the date of that notification to pay fee item (4)(b) [reg 11.05(1)]. If the fee is not paid, the design ceases [s.48(1)(b)].

Consequently examination will not commence on the design until the owner has paid this fee. It might generally be inferred that a failure to pay the fee is an indication that the owner has doubts about the validity of the design.

Comment. While the regulations do not prescribe a procedure for handling material filed pursuant


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to s.64(2), practice is to send the owner a copy of the material at this stage (and the 2nd copy is clearly for that purpose). If the owner has had insufficient time to deal with the material as a result of a failure to send the owner a copy of it, the basis for an extension of time [s.137(1)] for completing examination is likely to exist.


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D03.3 Who may request examination?

Examination may be requested by any person [s.63(1)]. A court can also initiate examination by ordering the Registrar to do so (this is not a request – see D03.5 Court Proceedings). The Registrar may on their own initiative examine a design that has been registered [s.63(2)]. It may be assumed that this provision will rarely be used. In particular, the Registrar will not entertain requests from third parties that the Registrar examine pursuant to s.63(2), as such requests are no more than a means of avoiding the fee for examination (fee item 3 or 4). If a third party considers the design should be examined (either because of the effect of the design on their interests, or because of altruistic views about the effect of the design on other persons) they should request examination pursuant to s.63(1) and pay the relevant fee.


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D03.4 Which Designs may be examined?

S.63(1) and (2) provide for examination of:

“a design that has at any time been a registered design”.

That is, examination is available in respect of a design that has at some time in the past or present been registered. However, pursuant to s.63(5) examination cannot proceed in the following circumstances:

i. The design has ceased for failing to be certified within the time allowed. Consequently, where a design has ceased for failing to be certified within the time allowed, examination cannot continue either in respect of that examination request, or in respect of any other pending examination request.

ii. The design has been revoked – except if the revocation was the result of an ownership dispute, and a declaration has been issued under any of sections 52, 53 or 54. [This removes any doubt that a design filed pursuant to s.55 may be examined despite the fact that the particular design had been revoked in the earlier proceedings.]

Additionally, examination under the 2003 Act is not available to designs registered under the 1906 Act. [s.151(3)(c)]

Examination under s.63 is expressly related to designs that have ‘at any time been registered”. The wording of s.63(1) expressly allows for the examination of designs that are no longer Registered Designs. However designs that have ceased through not having examination timely completed, or have been revoked, cannot be examined. [s.63(5)]

Where the term of the design has expired, or the design has ceased, there is a general question about whether the examination serves any purpose. S.71(4) provides a 6-year statutory limitation period for instituting court proceedings for infringement. If a request for examination is filed more than 6 years after the cessation of the design, prima facie there is no purpose to be served by the examination – and examination will not occur unless the requestor indicates a real purpose for the examination occurring.

There is no provision that allows for examination of a design application. The Registrar will not entertain requests to examine design applications.

Note: S.71(4) provides a 6-year statutory limitation period for instituting court proceedings for infringement. As a result, an owner can initiate infringement proceedings after registration of the Design has expired or ceased - in respect of infringements that occurred during the life of the Design.


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D03.5 Court proceedings

Examination of a design must not occur, or continue, if relevant proceedings in relation to the design are pending – unless the court orders the examination to start or continue [s.63(3) & (4)]

Relevant proceedings are court proceedings in respect of infringement, of revocation, or in which the validity of the design is in dispute. [see definition in s.5]. Other court proceedings involving the design (for example, contractual disputes over assignments and licences) are not relevant proceedings, and do not trigger the operation of s.63(3) & (4).

Accordingly, in any examination of a Certified design the owner will be requested to confirm that there are no relevant proceedings pending – both prior to the commencement of examination, and when responding to each examination report.

Some guidance about court directed examination might be gained from Capral v Koutsoukos (2005) 63 IPR 254 – which dealt with a similar provision in the Patents Act 1990.

See also D03.12 Interface with Court Proceedings


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D03.6 Handling concurrent requests for examination

Under the legislation it is possible for there to be concurrent requests for examination. It would generally be the case that at least one of the requests has been filed by a third party. The Registrar will deal with such requests in the following manner:

• Where examination on the earlier request has not commenced, the examination of the earlier and subsequent request will be conducted at the same time, considering all matters raised in the various requests for examination. If a ground for revocation is made out, a single report will issue – with a copy being sent to the third party.

• Where an examination report on the earlier request has issued, the examination of the subsequent request will commence in the normal manner – thereby raising any new issues at the earliest opportunity. Any matters raised in the earlier examination report will also be raised in the later examination. When the owner responds to the earlier examination, any grounds for revocation raised in the later examination will then be considered in that earlier examination. Consequently a certificate of examination will not issue unless all grounds for revocation raised in the various examination reports have been overcome. The final date for overcoming all grounds for revocation is the earliest date set under regulation 5.04 in respect of the various examinations. Once that date has passed, examination in respect of the other requests cannot continue as the registration has ceased [s.48(1)(a)]

Where plural requests for examination are filed, the person requesting the examination must pay the relevant fee. There is no basis for a fee reduction or waiver merely because there are other requests for examination pending, or that several examination requests are being dealt with concurrently. [Any general request for a fee waiver or refund will be assessed on the basis of the Corporate Guidelines for Refunds and Waivers, which is available on the intranet and internet.]

Where a third party requests examination, the registered owner is required to pay a fee [fee item 4(b)] with the design ceasing if that fee is not paid. In general, the owner will be expected to pay the fee in respect of each examination request. However the Registrar may consider waiving this fee if there is reason to believe that the requests for examination are being filed in a manner intended to be prejudicial to the owner - for example, forcing an owner to let the registration cease because they can’t afford the plural examination fees. In this regard, relevant considerations would be whether the third party is filing a series of examination requests in circumstances where it would be reasonable for a single request to have been filed, or whether plural third parties are filing requests for examination all referring to substantially the same material in relation to the newness and distinctiveness of the Design.

Comment: Under this arrangement for dealing with concurrent requests for examination, the Registrar will not be in a position of issuing a certificate of examination in response to one examination, while at the same time arguing that the design is not new and distinctive under another examination. That is, the Registrar will only get to a position of intending to certify if the Registrar considers that appropriate having regard to all pending examinations. It follows that all persons who requested examination will have a right to be heard under s.67(3).


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D03.7 Handling requests for examination when a Certificate of Examination has previously issued

Any number of examinations may occur on a Design. Subject to the considerations discussed in D03.4, each examination will go through the steps of completion of examination [s67(1)], notification to relevant parties [s67(2)] and issuance of a certificate of examination [s67(3)].

There is nothing to prevent an examination being requested on the basis of the material (including material filed under s.64(2) or s.69) referred to in an earlier request for examination – even where the Registrar has issued a Certificate of Examination in knowledge of that material. Issue estoppel does not arise out of the examination. However there is a general expectation of consistency of decision making, and it would be expected that the examination would have the same result – unless the person requesting examination has provided a clear indication of why the result should be different from the previous examination.

In circumstances where a third party requesting examination is unsatisfied with the examination, and repetitively files requests for examination reliant on substantially the same material, the Registrar may exercise her discretion to waive the examination fee payable by the owner.


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D03.8 Further reports

Where the Registrar has issued an examination report, the owner can respond by:

i. contesting, in writing, the ground for revocation; and/or

ii. requesting amendment of the Register.

Where amendments are filed:

• the examiner will consider compliance with reg 5.05(1), and whether the amendments meet the requirements of s66(6) {that is, they neither increase the scope, nor alter the scope by including new matter}. Any adverse findings [r5.05(2)], including any direction to file a substitute document or representation, will be included at the start of the further examination report.

Comment: 2nd and subsequent examination reports will/should always provide an indication of the amendments that have been filed, and a statement to the effect that those amendments have been considered.

• If the amendment is allowable (that is, it meets the requirements of reg 5.05(1) and s66(6)), the examiner will continue the examination as if those amendments had been made.

• If the amendment meets the requirements of s.66(6), but not of reg.5.05(1), the examination will continue as if those amendments had been made. However the examiner will include a note that examination has proceeded on the assumption that the owner will timely rectify the deficiencies under r5.05(1) that have been identified – failing which the grounds for revocation that would have been overcome by reason of the amendments would exist.

Comment: Reg 5.05(1) issues are in the nature of formality requirements. Hence it is appropriate to assume that the owner can (and will) readily overcome those deficiencies – and therefore the substance of the examination should proceed as if the amendments had been made.

• If the amendment does not meet the requirements of s.66(6), the examiner will indicate:

• The grounds for revocation that will exist if the amendment is allowed (including, if no grounds for revocation would exist, an express statement to that effect); and

• The grounds for revocation that exist without the amendment (including, if no grounds for revocation would exist, an express statement to that effect).

Comment: Where an amendment does not comply with s.66(6), options for the applicant are (i) to argue that the amendment does comply with s.66(6), or (ii) propose different amendments. Hence it is important to indicate the grounds for revocation both with,


11


and without, the amendments. The amount of detail that should be provided for each of the scenarios will depend on the factual circumstances.

The Registrar must reconsider whether there is a ground for revocation having regard to the arguments provided by the owner, and on the assumption that the proposed amendments have been made.


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D03.9 Being 'satisfied'

Examination is essentially an assessment of whether a design is new or distinctive. The ultimate test to be applied in examination is one of being satisfied about the presence or absence of a ground for revocation. Thus:

• S.67(1) applies if the registrar is satisfied that no ground for revocation has been made out; and

• S.68(1) applies if the registrar is satisfied that a ground for revocation has been made out.

This raises the questions of what is required to be satisfied, and what to do if the examiner is not satisfied with regard to both possibilities.

The Designs Act does not entail any ‘benefit of doubt’ considerations. Submissions that are intended to ‘raise doubt’ about the presence of a ground for revocation are misguided – as the concept of ‘being satisfied’ does not equate to ‘with absolute certainty’. That is, it is logically possible to be satisfied that a ground for revocation exists even in the presence of an element of doubt. Accordingly, agents should be focussing submissions towards establishing the presence or absence of ‘being satisfied’ that a ground for revocation exists, rather than trying to establish the presence of some element of doubt. Furthermore, it is the examiner’s assessment that is relevant – not that of the owner or agent. That is, agents need to persuade the examiner by means of reasoned argument based on evidence that no ground for revocation is made out. In this regard, the agent’s personal views of the merits of the case are essentially irrelevant.

Note that this does not mean that an examiner should maintain an objection merely on the basis that the agent has not argued against it; examiners must always re-appraise the validity of an objection at each report stage.

The standard to be applied in the examination of a patent was discussed on pages 166 and 167 of the Ergas report [Review of intellectual property legislation under the Competition Principles Agreement, September 2000]. The Ergas report recommended moving from a standard of benefit of doubt to one of balance of probabilities. This recommendation was accepted, and implemented in the Patents Act 1990 by No 160 of 2001. Sections 67 and 68 of the Designs Act 2003 use the same language (being ‘satisfied’) that was used to implement the Ergas recommendation in the Patents Act. That is, consistent with the rationale for the Patents Act applying a balance of probabilities test, the Designs Act 2003 implemented a balance of probabilities test in examination.

D03.9.1 Satisfied

The word ‘satisfied’ has a connotation of being convinced. The requirement of being ‘satisfied’ requires more than a mere personal opinion. It depends upon there being clear and convincing reasons based on evidence. Furthermore those reasons must demonstrate that the proposed interpretation and conclusions are preferable to any contrary argument that has been presented.


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Particular issues are:

• The reasons must be based on evidence. While being ‘satisfied’ is inherently a state of mind, that state must be formed by a logical assessment of the evidence. Being ‘satisfied’ cannot arise from mere opinion or belief unsupported by evidence.

• Mere assertion of something by the examiner does not constitute evidence. An examiner may have an opinion about certain facts – and in the first instance it may be quite appropriate to issue a report based on that opinion. But to maintain an objection in the face of a counter argument, the examiner will need to substantiate their objections by way of evidence (such as by search results). Maintaining objections on the basis of personal belief unsubstantiated by independent evidence may leave the examiner open to the criticism of bias.

• The examiner must “give proper, genuine and realistic consideration to the merits of the case” [Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1 (FCA/Sheppard J)]. That is, the examiner must have regard to all relevant material on the file, and treat the owner’s submissions objectively. Issues such as the perceived value of the design, the tone of the agent’s response, the fact that the response did not properly deal with the issues raised in a previous report, or that one argument is that of the examiner (and by implication preferable) are irrelevant.

A particular issue is the application of the standard of the informed user. In many situations the examiner’s assessment of the informed user standard will be influenced by their personal experience. However the examiner’s personal experience is never definitive of that standard. If the owner challenges the standard of the informed user applied by the examiner (by expressing a different standard, with supporting evidence), the examiner will need to substantiate their views of the standard by way of evidence (e.g. search results) if the objection is to be maintained.

There may be situations where the examiner is uncertain about how the law applies to the particular facts of a design. In such situations the examiner should seek advice about the law from the Deputy Registrar, such that the examiner is satisfied about the interpretation of the law in so far as it relates to the particular design. Any arguments about the interpretation of the law are to be discussed with the Deputy Registrar.

There can be situations where there is material uncertainty in the disclosure of a citation. For example, in Sportservice Pty Ltd [2007] ADO 6 the design related to a product that was inherently of circular cross-section, with that having a material effect on the overall impression. Where there is uncertainty about whether the citation discloses a material visual feature, the Registrar cannot be satisfied that a ground for revocation has been made out.

D03.9.1.1 ‘Satisfied’ as to prior art

Most prior art objections are based on s 15(2)(b), so being satisfied will involve some evidence of the publication of the document in which the prior art appears.

Section 15(2)(c) is more complex since the priority date of the potential prior art may not have been verified. The examiner will then need to verify the priority claim of the potential citation.

Section 15(2)(c) and excluded design priority


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This will typically have been verified as part of the formalities check. See Part 1, Chapter 11 of this manual for how to verify this type of priority.

Section 15(2)(c) and convention priority

Unlike excluded designs, convention priority claims are not routinely verified at the formalities stage. They can be verified at any time by asking for copy of the basic application from the registered owner under reg 3.06(3).

If the owner does not respond in time, or if the document forwarded does not disclose the design, the convention claim is forfeited. The potential citation should also fall away.

Only if the owner responds in time with a document that verifies the claim can the examiner be satisfied that a ground for revocation is made out. This clears the way for the objection to be raised in an examination report.

Section 15(2)(c) and other types of priority

In other cases, the examiner will need to consider the relevant documentation on the file and any associated files.

D03.9.2 Not satisfied

Sections 67 and 68 both require the Registrar to be satisfied as to the absence or presence of a ground for revocation. Quite clearly, if the Registrar is satisfied that either s67(1) or s.68(1) applies, the other cannot apply. However the converse does not follow. That is, the fact that the Registrar is not satisfied that either s.67(1) or s.68(1) applies does NOT mean that she is necessarily satisfied that the other DOES apply. It thus follows that an examiner may not be satisfied that a ground for revocation exists, AND at the same time is not satisfied that a ground for revocation does not exist.

For example, in response to an objection the owner provides a declaration about the informed user standard. If the declaration is accepted at face value, the examiner would be satisfied that there is no ground for revocation. However the declaration is such that the examiner has serious doubts about its credibility. [see D09.4.6.4 for guidance on assessing declaratory evidence.]

Examination is usually completed when the examiner is satisfied that there is no ground for revocation (as required in sections 67 and 68). Consequently, if at the first report stage the examiner is not so satisfied, they will raise relevant objections. In particular, if the existence of a ground for revocation is ‘arguable’, this alerts the owner to the issue, and provides them opportunity to place on record their arguments why the ground for revocation does not exist.

If at a further report stage a new issue arises, and the examiner is not satisfied that there is no ground for revocation associated with that issue, they will raise relevant objections.

If the relevant ground for revocation was raised at a previous report, and the examiner is undecided about whether or not a ground for revocation is made out, the examiner should discuss the case with their supervisor. It must be remembered that the decision to revoke the design is conditioned on the Registrar being satisfied that a ground for revocation has


15


been made out. If the Registrar is not satisfied that a ground for revocation exists, AND at the same time is not satisfied that a ground for revocation does not exist, the fact that refusal would lead to irretrievable loss of rights will lead to examination being taken as completed. However the Registrar will not complete examination on this basis unless it is apparent that further prosecution is unlikely to further clarify the issues.


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D03.10 Period for completion of examination

The scheme for examination entails an examination, written advice to relevant parties, the owner having an opportunity to propose amendments to the Register, and the Registrar reconsidering the Design.

The examination is completed when one of the following events occur:

i. The Registrar is satisfied as required under s.67(1) that either no ground for revocation has been made out, or a ground for revocation would be removed by the proposed amendments;

ii. The Registrar is satisfied as required under s.68(1) that the registration should be revoked; or

iii. The registration has ceased under s.48(1)(a) – without the Registrar being satisfied under either of 67(1) or 68(1).

Importantly, when the period prescribed in regulation 5.04 expires, the registration of the design ceases. That is, the owner has a specific time period from the date of the first examination notice to overcome all grounds of revocation – failing which the registration will cease (subject to the operation of s.137).

The normal period for completion of examination is 6 months from the date of the first examination notice [r.5.04(a)]. The period for completion may be a longer period in the following circumstances:

i. If material is provided under s.69 of the Act, and a new ground for revocation is included in an examination notice – the period is the later of 3 months from the date of the notice that first raises the new ground for revocation, or 6 months from the date of the first examination notice [r.5.04(b)];

ii. If the owner requests to be heard under s.68(4) [r.5.03(6)(d)] – such period as the Registrar determines [r.5.04(c)], including any appeals [r.5.04(c)(iii)]

iii. Examination is discontinued because of relevant court proceedings [s.63(4)] – such period as the Registrar determines [r.5.04(c)].

Note: When s.63(4) applies, the examination is merely put on hold pending the conclusion of the court proceedings, and is resumed after the conclusion of those proceedings. See D03.12 Interface with Court Proceedings.

In routine examination circumstances, the Registrar will not initiate formal proceedings for revocation under s.68(1). Where the owner disagrees with the examination, it is for the owner to request a hearing under s.68(4). Each examination notice should include a note to the owner informing them of their right to request a hearing under s.68(4) before the end of the 6-month period for completing examination.

D03.10.1 Last-minute responses; time for filing a request for hearing


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It may sometimes happen that the owner responds to an examination notice very close to the end of the 6-month period for completion of examination. In those circumstances it is expected that examiners will take all reasonable steps to consider the response within the time remaining. (And in such circumstances it would be expected that the owner or their agent will have contacted the examiner by telephone to advise them of the response just filed, to facilitate timely consideration by the examiner.)

Where an owner responds to an examination notice near the end of the 6-month period, they may have concern about the complete loss of the Design rights if the examiner does not agree with their response. As a result owners might include with such a late response a precautionary request for a hearing under 68(4). In such circumstances examination will proceed as follows:

• The examiner will make all reasonable effort to deal with the examination in the time remaining [failing which an extension of time under s.137(1) may be applicable];

• Where the examiner is satisfied as required under s.67(1) within the time remaining, proceed under that provision. No action in respect of the request for a hearing is required;

• Where the examiner considers that a ground for revocation remains:

• issue another examination notice;

• issue an Invitation to pay with respect to the request for hearing; and

• advise that the provisions of s.68 apply – but only if the hearing fee is paid.

• Where the examiner is unable to be satisfied that there is no ground for revocation in the time available:

• issue an advice that the response was filed too late for the examiner to consider the response and be satisfied that there are no grounds of revocation;

• issue an Invitation to pay with respect to the request for hearing;

• advise that the provisions of s.68 apply – but only if the hearing fee is paid; and

• on payment of the hearing fee, complete the consideration of the response. If at this stage the examiner is satisfied that there are no grounds of revocation, the Registrar can proceed under s.67(1) without a hearing – but there will be no refund of the hearing fee. Otherwise the matter proceeds to a hearing.

Note: In the circumstances of last-minute responses being filed with a precautionary requests for a hearing, payment of the fee for requesting a hearing when filing the response is to be discouraged. The fee for requesting a hearing will only be refunded in exceptional circumstances; in particular, it will not be refunded merely because the hearing is no longer required. Owners should use the Invitation to Pay mechanism to ensure a hearing fee is paid only if it is really needed.


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D03.11 Withdrawal of request for examination

While the regulations do not expressly deal with withdrawals of requests for examination, there is a general principle that a person who files a request may withdraw that request. However:

• If the request has been given effect, the withdrawal of the request cannot withdraw or negate the effect that has been given to the request; and

• A withdrawal can only be of the thing the person has requested – a person cannot withdraw a request made by a third party.

Where the person who requested examination requests withdrawal of the request before an examination report is issued, the request for withdrawal can be given effect. However there is no refund of fees – see below.

If the examiner has reached the stage of completing a first report (whether that be an adverse report, or a clear report), the request for examination has been given effect. Importantly, an examination report is prepared by a delegate of the Registrar and is inherently incapable of being withdrawn by the owner. Additionally the time for completion of examination is set by the date of the first report (regulation 5.04). Consequently once an examination report has been completed the examination must be dealt with on its merits; the owner cannot avoid dealing with the report by withdrawing the request for examination.

In all circumstances, the fee for filing the request is non-refundable; the effect of the withdrawal does not change the fact that an examination request was filed and an associated fee is payable. Furthermore, the withdrawal of a request for examination prior to the due date for paying the examination fee in response to an ITP does not avoid the consequence of ceasing if that fee is not paid – even though the examination request has been withdrawn by the due date for payment.


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D03.12 Interface with Court Proceedings

When relevant proceedings in relation to a design are started, the Registrar cannot start, or continue, with an examination of a Design (unless the court orders examination of the design). Relevant proceedings are court proceedings in respect of infringement, revocation, or validity of the design are in dispute. [See definition in s.5]. See also [D03.5 Court Proceedings]

However such court proceedings do not bring finality to the examination. Once the court proceedings are concluded, examination resumes (assuming the Design has not been revoked by the Court) with the time for completion of the examination being determined by the Registrar.

It may be observed that if the material before the Registrar has been judicially considered and found by the court to be insufficient to establish a ground for revocation, the Registrar would almost certainly adopt that conclusion (even though issue estoppel does not apply to the Registrar in such circumstances.)

However the mere fact that there have been court proceedings which have concluded without the Design being revoked does not give rise to a presumption of validity. For example, material before the Registrar may not have been before the court. Or relevant material before the court may not have been judicially considered by the court (such as in the case of consent orders, or where there has been a default judgement because a party failed to appear.) Accordingly the examiner should only consider discounting material that has been judicially considered, as evidenced from the decision of the court. Even then, it needs to be remembered that a court of law is bound by the strict rules of evidence whereas a tribunal (such as the registrar) may have regard to probative evidence of any kind – and in that context the general rule is that a tribunal that is required to decide an issue will be in breach of that obligation if it merely adopts the decision of the judge on the same issue. Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126. That is, it is open for the Registrar to reach a conclusion that contradicts that reached by a judge.

The full excerpt from Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126 is:

17 The second error (deference to the findings of the judge) requires some introductory comments. Proceedings in courts of law are bound by strict rules of evidence. In R v Deputy Industrial Injuries Commissioner; Ex parte Moore [1965] 1 QB 456, 488 Diplock LJ explained that "[f]or historical reasons, based on the fear that juries who might be illiterate would be incapable of differentiating between the probative values of different methods of proof, the practice of the common law courts has been to admit only what the judges then regarded as the best evidence of any disputed fact, and thereby to exclude much material which, as a matter of common sense, would assist a fact-finding tribunal to reach a correct conclusion." In contrast, unless otherwise provided by statute, rules of evidence do not bind administrative tribunals. Subject to an overriding duty of fairness (as to which see Board of Education v Rice [1911] AC 179, 182) a tribunal may have regard to probative evidence of any kind and from any source. It may even act upon its own knowledge, whether it be factual or scientific: Mahon v Air New Zealand [1984] AC 808.

18 The evidence to which an administrative tribunal may have regard can include evidence that has been given in another proceeding, including a court proceeding, provided the evidence is relevant to an issue before the tribunal: In re A Solicitor [1993] QB 69, 77. A tribunal may also accept as evidence the reasons for judgment given by a judge in other proceedings. But if the tribunal takes the approach that it should not disagree with findings made by the judge then the tribunal has fallen into error. The general rule is that a tribunal that is required to decide an issue will be in breach of that obligation if it merely adopts the decision of the judge on the


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same issue. (I put to one side (a) decisions which are the trigger for administrative proceedings and (b) criminal convictions which operate in rem and may not be challenged in collateral proceedings.) I do not mean to imply that reasons for decision given by a judge are irrelevant to an administrative tribunal. First of all, those reasons may, as I have said, be received into evidence. They must then be given some weight. Indeed, the judge’s findings may be treated as prime facie correct. On the other hand, if the judge’s findings are challenged, the tribunal must decide the matter for itself on the evidence before it: General Medical Council v Spackman [1943] AC 627.

19 Of course, when the tribunal is required to decide the matter for itself it is entitled to have regard to the judge’s findings. What weight it attaches to those findings will depend on a variety of considerations. Without in any way wishing to be exhaustive, the considerations can include: (a) whether the tribunal has available to it more evidence than was before the judge; (b) whether the arguments put to the tribunal were made to the judge; and (c) whether the tribunal is a specialist body with expert knowledge of the subject matter.

20 Now, in this case I fear that the delegate was intending to place too much emphasis on the judge’s or judges’ findings. In her reasons she said, correctly, that the court proceedings could "resolve issues which would require determination in the present oppositions." To proceed on the basis that it is unlikely that the Registrar will depart from the court’s findings and, that there is a public interest in avoiding inconsistent fact findings, indicates to me that there is a real risk that the delegate was not going to decide for herself the issues that must be decided to dispose of the opposition proceedings.

See also:

• Data dot v Alpha MicroTech 59 IPR 402, where there was no consideration of alleged anticipations because the alleged infringer failed to appear.

• Novartis v Bausch & Lomb 62 IPR 71, where the parties settled the day before the judgement was due to be issued. It is apparent from the reasons that the Judge had intended revoking the patent in whole – but because the parties had settled he felt unable to do so.


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D03.13 Intention to Certify

Where the Registrar is satisfied there are no grounds of revocation made out, or would be removed if the register was amended as requested, examination is completed [s.65(3)(b) and s.48(1)(a)].

Before examination is completed the following need be satisfied:

• The amendments are allowable under s.66(6);

• The design is a registrable design [Section 65(2)(a)];

• The design is not in a class of designs prescribed by regulation5.02 [Section 65(2)(b)];

Before a Certificate of Examination is issued:

• A notice under s.67(2) was issued to the relevant parties, allowing them an appropriate time to request to be heard [s.67(3)]. No party has requested to be heard. - OR -

• No notice under s.67(2) was issued, as the only Relevant Party was the Registered Owner. - OR -

• The decision of the delegate following a hearing under s.67(3) is that a Certificate of Examination should issue.

The Registrar must give the owner and any ‘relevant parties’ a notice that a certificate of examination is to issue [s.67(2)]. ‘Relevant parties’ are:

• The registered owner of the design;

• The person who requested examination; and

• Each person who is entered on the Register as having an interest in the design.

[see s.5 (Definitions) of the Act.]

Where the examination was requested by the owner, and there is no person entered on the Register as having an interest in the design, there is no purpose served by giving the owner a notice that a certificate of examination is to issue. Rather, the Registrar will issue a Certificate of Examination forthwith.

The notice must include details of any proposed amendments to the Register [s.67(2)]. The notice to a third party will also contain (by way of courtesy) a brief explanation of why the Registrar considers it appropriate to certify the design having regard to the material provided by the requestor when they requested the examination;

The notice will set a deadline for requesting to be heard. That deadline will usually be set at 1 month from the date of the notice. A different period might be set in exceptional


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circumstances. However a very short period would be unreasonable from the requestor’s perspective; and a significantly longer period may be unreasonable from the perspective of an owner wishing to commence court proceedings. While it is open for the Registrar to reset the time period, the Registrar is unlikely to entertain requests to change the period without evidence of the type that would justify an extension of time under s.137.

The passage of the deadline for requesting to be heard does not result in the certificate of examination being deemed to have issued. The Registrar must act under s.67(3), and remain satisfied that the certificate should issue. In practice, the Registrar will usually wait for a small number of days after the specified deadline before issuing the certificate of examination – to ensure all mail filed prior to the deadline has been acted upon. If a person files a request to be heard together with a request for an extension of time (s.137) after the deadline has expired, but before the Registrar has actually issued the certificate of examination, the Registrar must deal with the extension of time request before issuing the certificate. [see British Sky Broadcasting v Registrar of Trade Marks 58 IPR 216].

The Registrar expects a request to be heard to be in writing. However the Act and regulations do not in fact require such a request to be in writing. Where a 3rd party requests a hearing orally:

• The file should be appropriately annotated;

• An ITP should be issued immediately – with advice that no action to set the matter for hearing will occur until the fee is paid; and

• The owner and any other relevant party informed of the oral request for hearing.


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D03.14 Material provided by a 3rd party

Pursuant to s.69, a 3rd party may provide the Registrar material relating to whether a design is new and distinctive. This mechanism is rarely used, for reasons that include:

• providing the registrar with material might be equivalent to informing the owner of a potential infringer in the market place; and

• a third party who is aware of relevant material might make a strategic assessment that their commercial interests are best served by not filing the material.

The various issues associated with filing material under s.69 are:

• Two purposes are served by the filing of the material.

• the examiner is expected to have regard to any such material when examining the design; and

• third parties have access to material that ‘someone’ thinks is relevant to the newness and distinctiveness of the design – particularly if they are considering issues of infringement or validity.

In the examination process, such material is no more than ‘potential’ citations – to be considered with other potential citations found during a search. In some cases, the material will be the most relevant material identified; in other cases the examiner may find more relevant material in their search. In any event, the examiner will indicate on the case file their assessment of the relevance of the material – especially if no objection of newness or distinctiveness is raised on the basis of that material.

• Material may be filed at any time after a design has been registered. [s.69(1)].

It is highly unlikely that material would be filed before registration (because a design is not OPI prior to registration). However if such material was filed, public interest considerations prevent the Registrar from simply ignoring or returning the material. Consequently the Registrar will handle the material as if it was filed after registration.

• The material is required to be filed in duplicate – Reg 5.08(1)(a)

The requirement that the material be provided in duplicate is important, as the copy is sent to the owner – s.69(3)(b). Where the requestor only provides a single copy of that material, the Registrar may treat the request as not being in accordance with the approved form – and act under regulation 11.27(3)(a) to return the documents to the requestor. It may be assumed that the Registrar will return the documents unless the amount of material to be copied is very small.

• The material should be accompanied by evidence of the date of publication.

Establishing the date of publication is critical to determining whether the design is new or distinctive. To be effective, the evidence must be able to stand on its own. That is, the certainty about the publication date must be of the same level expected of a citation found in a


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search. Evidence of the type ‘I first saw this document on yyyy-mm-dd’ is merely evidence of the publication date. It is not prima facie proof of the publication date – even if asserted in a Statutory Declaration. In situations where establishing the publication date requires detailed consideration of evidence, it is likely that proper consideration can only be given in a hearing under s.67(2). Note that the party filing the material can only be heard under s.67(2) if they have also requested examination.

• The material should be legible

If the copy of the material that is provided is of poor legibility, the Registrar may act under regulation 11.27(3)(a) and return the documents to the requestor. Alternatively the Registrar may treat the request as having been filed, and examine on the basis of the material supplied to the extent that the disclosure in those documents can be clearly identified.

• The person filing the material does not need to request examination. [s.69(1)].

• The person filing material has no right to be heard in the examination proceedings.

The right to be heard in relation to an examination is limited to the owner, a third party who requests examination, and persons entered on the Register as having an interest in the Design – see Dictionary definition of ‘relevant parties’, as used in s.67(3) and s.68(2). While s.68(4) requires the Registrar to hear the Owner before revoking the registration, any ‘relevant parties’ would be entitled to be heard at such a hearing – but not a person who has merely filed material under s.69.

• There is no requirement, and there should be no expectation, that the Registrar will initiate examination as a result of the material filed.

A 3rd party might think that the material they have provided clearly demonstrates the design lacks newness and distinctiveness – and urges the Registrar to examine the design ‘in the public interest’. In effect, the 3rd party is trying to have the design examined without having to pay the examination fee. A design cannot be enforced before it has been examined. An un-examined design has no presumption of validity. Consequently there is no public-interest benefit to justify the registrar initiating examination of a design merely because a 3rd party files material that is said to establish invalidity. Rather examination occurs as a result of the private interests of the owner in being able to enforce their design, or of the private interests of a commercial competitor wanting to manufacture or sell a similar (or the same) product. Accordingly, where a 3rd party files material under s.69 and urges the Registrar to examine the design, the 3rd party should be advised that examination will not occur unless and until they (or another person) requests examination and pays the relevant fee.

• The material must be retained on file for 6 years after the term of registration of the design has expired [s.69(3)(c), Reg 5.08(2)(b)]


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The 6-year period corresponds to the limitation period for infringement specified in s.71(4).


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D03.15 3rd Party Initiated Examinations

Background

Section 63(1) permits any person to request examination of a registered design [D03.3]. When a person other than the registered owner or a prescribed court requests examination, it is referred to as a 3rd party examination request, and the person as a 3rd party.

A 3rd party is a party to the examination process and has a right to be heard on the outcome of the examination. Practically, this means that examiners must forward certain material to the 3rd party, but must not directly engage in any argument with the 3rd party on matters of newness and distinctiveness.

Pre-examination processes

The 3rd party must pay half the examination fee [fee code NDXR – Regulation 11.06], and the registered owner is invited to pay the other half [fee code NDXO - Regulation 11.05]. If the registered owner does not pay its half of the fee within two months of the invitation, the registration ceases [Regulation 11.05(2)].

3rd party examination requests are often accompanied by material submitted under section 69. A copy of this material must be sent to the registered owner as soon as practicable after it is filed. It is not to wait for the examination to take place.

Designs Administration is responsible for the pre-examination process, but when the examination area receives the request, the Duty Officer should check that these initial stages have been carried out. Any problems with fees or section 69 material should be referred to the Team Leader of Examination, who may decide to correct the error in house or return the file to Designs Administration.

Initial examination processes

1. The Duty Officer prioritises the request above standard examination requests (i.e. it is expedited).

2. Once the task is assigned to an examiner, the examiner carries out examination as normal up to the point prior to issuing a report (adverse or clear).

First adverse report

1. The examiner drafts the first adverse report as normal, together with a covering letter addressed to the 3rd party.


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2. The adverse report is sent to the registered owner, while a copy of the first report under the covering letter is sent to the 3rd party [Regulation 5.03(8)].

Further adverse report

1. Upon receipt of a response from the registered owner, the examiner drafts the further adverse report as normal, together with a covering letter addressed to the 3rd party.

• Any response from the 3rd party should be considered, but not replied to directly. Instead, the examiner may refer to information from the 3rd party response in the further adverse report, and must send a copy of the 3rd party response to the registered owner.

2. The further adverse report is sent to the registered owner (with the 3rd party reply attached, if any), and a copy of the further adverse report under the covering letter is sent to the 3rd party [Regulation 5.03(8)].

Clear report

1. If the file contains material submitted under section 69 [D03.14] (including submissions from the 3rd party) or the reason for issuing a clear report is not obvious from the file, the examiner drafts a record of reasoning in line with Product Quality Standard 3.3 [D02].

2. The examiner issues notices to both parties indicating the examiner’s intention to issue a Certificate of Examination, enclosing the record of reasoning (if any). The notices must state:

a. That the design has been examined [section 67(2)(a)].

b. If the clear report is dependent on amendment(s) being made, the details of the proposed amendment(s) [section 67(2)(b)].

c. That a Certificate of Examination is to be issued [section 67(2)(c)].

d. That the parties have an opportunity to be heard before a final decision is made [section 67(3)], and set a deadline for the hearing request. The deadline should be reasonable in the circumstances – one month from the date of the notice will be sufficient in most cases.

3. The examiner keeps a diary record of the deadline. Five working days after the deadline passes, the examiner checks the file for any response from the 3rd party. If nothing has been filed, the examiner issues the clear report as normal.

. If the 3rd party requests a hearing before the deadline, this request is processed by Designs Administration in the first instance, and then by Hearings.

a. If the 3rd party raises further argument or files material under section 69 and the examination period is not over, the examiner will consider whether to


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issue a first or further adverse report (as appropriate). Otherwise, if the deadline to request a hearing has passed, the examiner issues the clear report as normal.

Annex A - 3rd Party Examination Flowchart


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D03.16 Revocation during Examination

Due to the relatively short examination period of 6 months, revocation of registration during examination [s.68] does not commonly occur. Design registrations that fail to overcome grounds for revocation will generally cease at the end of the examination period if no hearing is requested.

When to consider revocation during examination:

Generally, the following conditions would prevail before examination of a registration could be considered to have reached an impasse:

• all ground(s) for revocation have been raised and clearly explained;

• the owner has been advised of available options for overcoming the grounds for revocation, including amendment of the registration under Section 66;

• all submissions have been fully considered and have been responded to;

• the examiner is satisfied that the ground for revocation would not be removed by any proposed amendment [s.66]; and

• it does not appear any further progress can be made.

Notification of intention to revoke a registration:

If the delegate is satisfied as to the above, a Notice of Intention to Revoke will be prepared, signed and issued by the team leader.

The Notice of Intention to Revoke will contain:

• a restatement of the ground(s) for revocation;

• reasons why submissions to date have not been sufficient to overcome those grounds;

• 21 days notice to request a hearing on the matter.

A full review of the examination process will take place and all grounds for revocation will be re-assessed before dispatch of the Notice of Intention to Revoke.

If no hearing is requested in the given period, the team leader will revoke the registration and issue a Notice of Revocation.

Revocation of a design registration may occur outside of examination in the following circumstances: • Owner requests surrender - COG process • Court order for revocation; Revocation on grounds of entitled persons - TM&D Hearings & COG process. • Revocation when hearing was requested during examination – TM&D Hearings & COG process.


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D03.17 Expedited Examination

Owners may make a request to the Registrar for expedition of the examination of their registration. Also, all third party examination requests are automatically expedited. There are no specific provisions in relation to expedited examination.

If the owner is requesting expedited examination they must give reasons for the request and the Registrar will grant a request for expedited examination if the request is based upon reasonable grounds.

The expedited tasks should be taken by examiners from the relevant Expedited Examination EDMS folder as a matter of priority. There will be some cases that are still hard copy and not on EDMS. These are to be treated in the same way as cases in the Expedited Examination EDMS folder.

Because of the nature of cases that have expedited examination requests, these registrations need to be examined before registrations that have not had expedited examination request. The expedited examination cases should be closely monitored to ensure that they are examined ahead of other unexamined cases.


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Chapter 4 – Identifying the Design

D04 Identifying the Design

1. D04.1 Introduction

2. D04.1.1 Plural designs

3. D04.1.2 Effect of other Designs on interpretation

4. D04.1.3 Effect of statements made during prosecutio

5. D04.2 Design in relation to a product

6. D04.3 What is a product?

7. D04.3.1 The owner’s identification of the product

8. D04.3.2 “Any thing that is manufactured or hand made”

9. D04.3.3 Products and human beings

10. D04.3.4 A component part of a complex product if made separately

11. D04.3.5 Indefinite dimensions

12. D04.3.6 Kits

13. D04.3.7 Common designs and multiple products

14. D04.4 Overall appearance, and visual features

15. D04.4.1 Overall appearance resulting from …

16. D04.4.2 Visual feature - shape, configuration, pattern and ornamentation

17. D04.4.3 Variable visual features

18. D04.4.4 Functional purpose

19. D04.4.5 Internal features as visual features

20. D04.4.6 Colour as a visual feature

21. D04.4.6.1 Colour as used in representations

22. D04.4.7 What cannot be a visual feature

23. D04.4.7.1 the feel of the product

24. D04.4.7.2 the materials used in the product

25. D04.4.7.3 in the case of a product that has one or more indefinite dimensions

26. D04.5 Interpretation of representations

27. D04.5.1 Drafting styles

28. D04.5.2 The nature of representations

29. D04.5.3 Unclear representations

This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 03 December 2014

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Updates

30. D04.6 Role of a Statement of Newness and Distinctiveness

31. D04.6.1 Illustrative statements

32. D04.6.1.1 Ambit statements

33. D04.6.1.2 Descriptive statements

34. D04.6.1.3 Limiting the design to one or more of Shape, Configuration, Pattern or Ornamentation

35. D04.6.1.4 Statements referring to all the features of the design

36. D04.6.1.5 Methods of manufacture or use

37. D04.6.1.6 Statements of assertion

38. D04.6.1.7 Statements referring to features not shown in the representations

39. D04.6.1.8 Features not otherwise visible


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D04. Identifying the Design

D04.1 Introduction

The Designs Act provides protection of a design in relation to a product [s.8]. A design, in relation to a product, means ‘the overall appearance of the product resulting from one or more visual features of the product’ [s.5 – definition of design.]

The Act provides for a clear distinction between the subject matter of a design, and the newness/distinctiveness of a design. In particular:

• sections 6 to 8 (plus the definition of design in s.5) set out the subject matter requirements of a design in terms of product, overall appearance, and visual features; and

• sections 16 to 19 set out the criteria of newness and distinctiveness (including statements of newness and distinctiveness, and overall impression) for assessing the registrability of a design.

Before one can apply the criteria of newness and distinctiveness to a design, it is first necessary to identify the design through the concepts of ‘product’, ‘visual features’, ‘overall appearance’, and the interpretation of the representations. As stated in para 52 of Review No 2 v Redberry Enterprises [2008] FCA 1588:

‘everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration.’ {emphasis added}.

That disclaiming can arise in many ways (such as the way the representations are drawn, or from the statement of newness and distinctiveness), requiring interpretation of the representations and other material present in the Register entry. For example, the register entry for that design (307708, ‘Ladies garments’) was a colour photograph of a garment on a store mannequin – but there was no suggestion that the mannequin formed part of the design. This part of the manual is directed to identifying the design that is the subject of the registration.

These terms ‘product’, ‘visual features’ and ‘overall appearance’ have some conceptual commonality with different terms used in the Designs Act 1906 – which means that some precedent under the 1906 Act may be relevant under the 2003 Act.

D04.1.1 Plural designs

The number of designs present in a design application is a matter intended to be dealt with at the formalities stage. To that end, the applicant is required (via the approved form) to indicate the number of designs in the application, and pay the corresponding filing fee. And the Registrar’s assessment of the number of designs is part of the formality check. Consequently examination will proceed on the basis that the design registration is in respect of a single design only.

At examination the examiner may reach the conclusion that the registered design might be for more than one design. The following are possible scenarios

• No issue was raised in formalities, but the representations are clearly in respect of two separate designs. It is appropriate to treat them as different designs and assess


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Updates

them separately against the requirements of newness and distinctiveness. There is no objection to the fact of there being plural designs. However examination cannot be completed until all designs satisfy the newness and distinctiveness requirements (which might be achieved by deleting by way of amendment.)

• The issue was raised in formalities, with the owner arguing there was a single design. During examination the owner seeks to argue there are plural designs. The examiner should proceed on the basis of there being only one design, with the visual features of the design being those that are in common to (or consistent with) the various representations. [Note that such arguments may establish a ground of invalidity under s.93(3)(d)] All instances of this situation should be referred directly to the Deputy Registrar.

D04.1.2 Effect of other Designs on interpretation

It is not unusual for an owner to file multiple applications for similar designs on the same day. Also an owner might subsequently file a design that might best be described as an improvement over an earlier design they have filed.

A design must be construed and assessed on the basis of that design alone. In particular:

• no regard may be had to the content of other designs filed by the owner on that day; and

• no regard may be had to the content of any designs filed by the owner at a later date.

See, for example, Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 21 ALR 1, and Pfizer Inc v Commissioner of Patents [2005] FCA 137)]

However, when considering the allowability of amendments under s.28 or s.66(6), regard must be had to the disclosures in any document included in the design application when filed. If that application disclosed multiple designs, all such designs are included for this purpose. See s.28(3) and s.66(6)(b).

When an application is filed containing plural designs, the practice of the Designs Office is to place the designs and associated correspondence in different files. In such circumstances the relevant disclosures may be held on a different file.

D04.1.3 Effect of statements made during prosecution

During prosecution of a design, an owner might make various assertions or concessions about the scope or interpretation of the designs. In some jurisdictions such assertions or concessions have a binding effect on the owner by way of a principle referred to as file wrapper estoppel. In the context of patents, the Federal Court has concluded that the doctrine of file wrapper estoppel does not apply in Australia. [see Re Prestige Group (Australia) Pty Ltd v Dart Industries Inc [1990] FCA 281; 19 IPR 275]. It may be assumed that this conclusion applies equally to Designs.


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D04.2 Design in relation to a product

The definition of “design” under section 5 of the Act is:

“design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product”.

The design right granted under the Designs Act is a monopoly in a design. It is not a monopoly in a product, nor in the trading of the product that it is registered in relation to. It is a conception, suggestion or idea as to features of shape, configuration, pattern and ornamentation applicable to a product, and not a product which is the thing capable of being registered. [See, for example, Re Clarke's Registered Design (1896) 13 R.P.C. 351 at 358.] Without the design, the product would still have its basic character. For example a chair would still be a chair, a spoon would still be a spoon and a table would still be a table. The design operates on the product to give it its own particular appearance.

For example: a design right in respect of a design applied to a fork would prevent others from making forks that had the particular design applied to them. However the design right cannot be used to stop anyone else making forks other than those that have the particular (or substantially similar) design applied to them.


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D04.3 What is a product?

Section 6 defines a product as:

a. Any thing that is manufactured or hand made.

b. A component part of a complex product if made separately.

c. A thing that is of one or more indefinite dimensions, so long as one or more of the following applies:

i.a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern;

ii.all the dimensions remain in proportion;

iii.the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios;

iv.it has a pattern or ornamentation that repeats itself.

d. A kit which, when assembled, is a particular product is taken to be that product

This definition is exhaustive. Consequently if a purported design is in respect of something which does not fall within this definition of ‘product’, there is no subject matter for the registration of a design.

Microsoft Corporation [2008] ADO 2 involved an application for a design in respect of a font. Registration was refused on the basis that ‘the present design does not disclose a product bearing visual features. It only discloses visual features.’

It is important to recognise that the definition of a product is limited to the concept of being a ‘thing’. In particular, selling an identical ‘thing’ (product) for a different purpose or use does not thereby make it a different ‘thing’ (product). The ‘thing’ is still the same thing. The following propositions apply:

• A thing does not become a different product merely by giving it a different name.

For example, consider a manufacturing plant producing an object – with every second object being packaged with a different label, description, or statement of use. That packaging or labelling does not convert the identical objects into different products when considered as a thing.

• The chemical composition of a product is per se irrelevant. Design protection is in respect of the appearance of a product, not the chemical composition. (Note s.17(3)(b)).

For example, consider two pharmaceutical tablets having the same appearance. One tablet contains aspirin. The other tablet contains codeine. In the context of Designs, the tablets are the same ‘thing’; the chemical composition has no direct or indirect effect on the appearance of the product. Calling one product a ‘codeine tablet’ and the other product an ‘aspirin tablet’ does not create different ‘things’ in the context of the Designs Act.


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It might be that differences in the composition of the thing will give rise to a different visual appearance (which potentially forms the basis for distinctiveness). For example, a different chemical composition might give rise to a different colour of the thing. But colour is a difference in a visual feature of the product, not in the nature of the product.

• A thing is not a different product merely as a result of it being a different size (with the dimensions being in the same proportion).

For example, a medium sized shirt and an XXL sized shirt are not different products as a result of their difference in size. However, a similar shirt but of a size appropriate for a small doll could be considered a different product.

Consequently, while an understanding of the express or implied use of a product is required to classify the design in the Locarno classification, care must be taken to properly understand the nature of the product – particularly in the context of determining search strategy, and also in applying the tests of newness and distinctiveness.

Design protection is not in respect of function or purpose (although a design may be based on features that result from the function or purpose). See D04.4.4. Note that the use of a known thing for a new function or purpose is proper subject matter for the grant of a patent.

D04.3.1 The owner’s identification of the product

The starting point for the identification of the ‘product’ is the owner’s identification of the product when they file the application. The approved form requires the applicant to specify the product(s), and it is this identification that is included in the Register.

Note: The design right is expressly limited to products in relation to which the design is registered [s.10(1)(a)]. For that purpose the product the applicant specifies in their application is entered on the Register [s.111(2)(a)] at registration. It is the responsibility of the owner to correctly specify the product. The only consideration of the product identification given before registration is whether the product has been identified sufficiently to allow classification in accordance with the Locarno classification [Reg. 4.04(1)(c), 4.05(1)(c)]. In examination proceedings, if that product identification is in some manner deficient, any amendment thereof must comply with s.66(6).

However when considering issues of newness and distinctiveness, or of infringement, it is necessary to correctly understand the nature of the product as a ‘thing’. To this end, it is important to recognise that the Locarno classification classifies designs on the basis of function (express or implied) rather than appearance or structure – with the result that a product (thing) will usually have a classification dependant upon the owner’s identification of purpose.

Example: Plastic milk crates can be used for crating milk cartons. However they are also known to be used as a stool, a step ladder, a book case, a container, a motor-cycle carrier rack etc. The Locarno classification given to a ‘thing’ that is otherwise a milk crate may


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depend upon the identified use of the thing. But the identical thing is not different merely because it has a different identified purpose.

Consequently, when an examiner is conducting a search they need to consider where they might find the product (as a thing) bearing the design – recognising the possibility that the same thing with the same or a similar design might be classified on the basis of a different asserted purpose.

While the product is expressly an entry in the Register [S.111(2)(a)], it is still necessary to interpret the ambit of the product as so identified. This will usually entail a consideration of the product identification, the representations, and the understanding of an informed user. It should be noted that the only criterion for rejecting a product identification is if the product is insufficiently identified for Locarno classification – and this can only arise in the formality check under reg.4.04(1)(c) or 4.05(1)(c).]

Example: A design might be sought in respect of a “tyre tread”. Ignoring re-treads and the like, a tyre tread is not a product in its own right, nor part of a complex product; it is a pattern applied to a certain part of a tyre. Tyre treads are classified as such in Locarno [Loc (9) Cl.12-15], and so no objection to the product name being “tyre tread” can arise at formalities. At examination the only issue is the correct understanding of the product for the purpose of conducting a search for newness and distinctiveness. In particular, there is no statutory objection to the ‘correctness’ of the product identification available to the examiner. [see s.65(2) and 15(1) in particular, noting also R5.02 & s.43.] However the informed user would clearly understand that the product was a tyre, and the tread was the design applied to the tyre, and examination would proceed on that basis.

For most designs the nature of the product (thing) is self-evident from the owner’s identification and the representations. However some issues that can arise are:

• Where there is conflict between the product identification given on the application form, and the representations, the product will be identified on the basis of the representations – with an assumption that the textual product identification is in error.

Note – where the difference between the product description and the representations is readily apparent, the issue will often be dealt with at the formality check as a result of the consequential uncertainty in the Locarno classification. However if there is no uncertainty in the Locarno classification, or the difference is not readily apparent, the issue may not surface until examination.

• Where the product identification given on the application form is apparently different to that shown in the representations – but the representations can be interpreted consistently with the product identification – the product will be identified on the basis of the representations as interpreted by reference to the product identification.

• The identification of the product will typically be based on a range of implied characteristics. For example:

• a ‘writing instrument’ is essentially something that can be handheld and put visible marks on a surface;

• a ‘pen’ is constructed to hold ink and release it while writing;

• a ‘pencil’ holds one or more lengths of a solid material for writing


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in which case it may be observed that:

• both a pen and a pencil are writing instruments. That is, when considering a design in respect of a ‘writing instrument’, earlier designs in respect of each of the three products are all in respect of the same product – a writing instrument.

• a pen is not a pencil, and vice-versa. And a writing instrument is not necessarily a pen or pencil. Consequently when considering a design in respect of (for example) a ‘pen’, earlier designs in respect of pencils and ‘writing instruments’ are in respect of ‘similar’ products, not the same product. [Assuming the representations in the ‘writing instruments’ do not expressly indicate a pen as a possibility.]

Sometimes the product identification includes an indication of intended use [or even a separate statement of use]. Generally such statements mean no more than the product must be capable of performing that intended use. For example, ‘A container for molten steel’ implies a certain ruggedness of construction that would not be expected in goods made from plastic – such as a lunch box. In contrast, the qualifications of container in ‘A container for water’ and ‘A container for milk’ are unlikely to import any constructional or visual feature differences between the two containers.

When assessing the newness of a design: a thing used for one purpose is not distinguished from the same thing when used for a different purpose. It is the identical thing. Accordingly a statement of intended use is relevant to newness only to the extent that it implies the presence of specific features in the thing. [See also 9.2]

When assessing whether a design is distinctive: the statement of intended use is relevant to identifying the informed user, as well as the ‘related products’ that can be considered under s.19(3). An informed user would generally be a person having direct knowledge of the product and its intended use. The significant question is – what other uses would the informed user consider to be relevant to the product. For example, would an informed user in respect of a ‘milk container’ consider a ‘water container’ to be a similar product to a milk container – such that the water container would be relevant as a citation having regard to s.19(3)? [See also 9.4.6.3]

• Uncertainty about the nature of the product arises if an indication of function or purpose is by way of trade names or Trade Marks. Trade names or Trade Marks are an indication of source or origin, not structure or appearance (with the exception of shape marks). They do not provide any unique characterisation of the product or its appearance, which may change in time or geographic location. Similarly phrases like ‘to suit’ are non-specific as to the nature of suitability – whether the suitability is based on one or more of mechanical, chemical, electrical, or optical properties (to name just a few…). In examination, it is appropriate in the first instance to proceed on the basis that such indications or phrases provide no limitation on the nature of the product different to what is evident in the representations (as understood by an informed user).

It must be remembered that the trade mark owner does not have exclusive rights to the trade mark other than those created by the Trade Marks Act 1995 - including indicating the source or origin of the goods. For example, a towel bearing the ‘marks’ of many well-known brands in some form of pattern might not constitute an infringement of any of the marks – depending on the presentation. In any event, the issue of whether such a product would infringe a trade mark, or any copyright


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associated with the trade mark, is not an issue that is directly relevant to the validity of a design.

Some common Trade Marks that might be inadvertently used to identify a product are:

AERTEX (clothing) APPLE (computers/computer equipment)

BAKELITE (insulation dressing)

BAND-AID (adhesive dressing/materials)

BIRO (ball point pen) BLUETOOTH (telecommunication /computer communication equipment)

BOBCAT (earth moving vehicles/equipment)

BOOGIE (body board) BOWSER (metering pump)

BREATHALYSER (chemical preparation for absorbing and oxidising alcohol/alcohol breath tester)

BULLETIN (newspaper/publication)

CATERPILLAR (Machinery)

CELLOPHANE (cellulose sheet)

COCA-COLA (COKE) (aerated beverage)

COMPACTUS (devices for storing)

CYCLONE (scaffolding materials)

DACRON DICTAPHONE (instrument for recording and reproducing dictation)

DOONA (quilted eiderdowns or padded quilts)

DUCO (enamel paint) ELASTOPLAST (elasticised dressing)

ELECTRIC EEL (sewer/drain cleaning apparatus or equipment)

E-MAIL (computer/electronic mail)

ESKY ((portable) cooling apparatus/ice boxes)

FORMICA (laminated building material)

FRISBEE (toy flying saucer) GYPROCK (building material)

HEAT BEADS (solid fuel) HOOVER (vacuum cleaner) iPOD (Portable audio and data storage equipment)

JEEP (small military-style vehicle)

KLEENEX (facial tissues) LAUNDRETTE (washing machine)

LI-LO (inflatable mattress) LYCRA (synthetic fibres and filaments)

MACINTOSH (computer equipment and software)

MASONITE (fibre board) MEMORY STICK (Portable data storage device)

NINTENDO (electronic game)

PERSPEX (heat resistant glass/plastic)

PLAY DOH (modelling compound/clay)

POLAROID (photographic equipment)

POLYBAG (infusion bag) PRIMUS (portable cooking apparatus)

PYREX (Glassware)

ROLLERBLADE (in-line skates)

SELLOTAPE (adhesive tape)

SPAM (canned spiced ham)

SPLAYD (combined knife/fork eating instrument)

STACKHAT (safety helmet) STYROFOAM (multicellular expanded synthetic resinous material)

TEFLON (generally refers to a non-stick lining for cookware)

THERMOS (insulated flask) UGH (boots)

WALKMAN (portable audio equipment)

WINDCHEATER (close-fitting garment for wind

WHIPPER SNIPPER (lawn-grass trimmer or edger)


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protection) XEROX (Electrophotographic copying machine)

D04.3.2 “Any thing that is manufactured or hand made”

The use of the word ‘thing’ in the definition of product restricts the subject matter to tangible objects having material form. This is supported by the context of the term appearing within the sentence “a thing that is manufactured or hand made” – the concepts of manufactured or hand made both carry a strong connotation of physical process. This interpretation is also supported by several earlier decisions of the courts and this office. In particular, ‘a thing’ does not include ethereal or invisible objects (such as electrical signals). Some examples are:

• while the base of a fountain, and a water spout therein designed to generate a fountain of a particular shape, are appropriate tangible objects for design protection, the water jet emanating from that fountain is inherently ethereal in nature and is not a manufactured or hand-made ‘thing’

• A laser might be controlled to produce a 3-D spatial image of an object; that image is not a ‘thing’. However if the laser is used to ’burn’ that image into a block of Perspex™, a relevant ‘thing’ has been created

• A type font is the shape of characters. A type font does not exist as a thing in its own right. That is, a font cannot be a product; at most it is the design applied to a product. In some situations the product is strongly associated with the characters formed according to the font – such as house numbers. In other situations the product is only weakly associated with the font applied to characters– such as the paper and the text imprinted on it from a computer printer, or lettering on children’s building blocks – such that the criterion of distinctiveness may not be met.

The terms “manufactured” and “hand made” reflect the industrial nature of design protection. Things that occur naturally are not capable of registration. For example, while a carved potato is a ‘thing that is manufactured or hand made’, an unaltered potato is not.

Applicants or owners might respond to an objection based on the above by asserting that the Registrar is taking an unnecessarily narrow view of the scope of protection available under the Designs Act, and should apply a more liberal approach to be consistent with the practice of one or other foreign Designs offices. It needs to be remembered that Designs are granted in Australia under the provision of the Australian Designs Act – and not the legislative regime of a foreign country.

See also D04.4.3.1 for specifics on viewing visual features as though the design is ‘at rest’

of wall-paper (implied utility), are equally products under the Act. However, the product must be identified sufficiently to allow classification in accordance with the Locarno Agreement [regulations 4.04(1)(c), 4.05(1)(c)], which usually means that there will be an expressed or implied utility associated with the nominated product.


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Note: Regulation 11 of the Designs Act 1906 excluded a range of articles that were primarily of a literary or artistic character. This exclusion does not exist in the 2003 Act [refer ALRC recommendation 19]. Accordingly decisions like Re Application by TDK Electroniks Co Ltd (1983) 1 IPR 529, and Re Littlewoods Pools Ltd's Application (1949) 66 RPC 309 have no application under the 2003 Act.

D04.3.3 Products and human beings

A human being is not something that is manufactured or hand-made. Consequently, while design protection is available for a hair style as applied to a wig, design protection is not available for that hair style as applied to a person’s actual hair – as the relevant ‘product’ to which the design is applied is the human being. This issue can arise in a number of situations, such as:

• Ornamentation on an artificial fingernail involves a product, whereas ornamentation on an actual fingernail is ornamentation of a human being;

• Transfers or designs for applying ornamentation to a body (such as decals, transfers, and patterns for body painting, tattoos, branding or scarification) involve ornamentation of the carrier; however the ornamentation as applied to the human body is ornamentation of a human being.

This issue will normally be identified in the formality check under r.4.04(1)(c) or 4.05(1)(c) – on the basis that if the application does not identify a product within the meaning of the Act, there is no product for classification into Locarno.

Where this situation is identified in examination, the ground for revocation is that the design is not a registrable design because there is no product within the meaning of the Act bearing the design – and consequently the design is inherently incapable of being new or distinctive.

D04.3.4 A component part of a complex product if made separately

The component part of a complex product is a product in its own right if it is made separately. Section 5 of the Act gives the definition of a complex product as:

complex product means a product comprising at least 2 replaceable component parts permitting disassembly and re-assembly of the product.

A design in respect of a complex product does not give protection in respect of the component parts per se. Protection only arises when separate design registration is obtained.

In assessing whether a product is a unitary product, or a complex product, regard should be had to the structure of the product. The mere fact that a product is made of numerous components does not make it a complex product. A product is a complex product only to the extent that it permits disassembly and reassembly. For example, a product where


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components are held together by way of screws is inherently a complex product – as the component parts can be disassembled and reassembled. In contrast, a tyre tread is an inherent part of a tyre that is not capable of disassembly – even in the context of tyre retreads.

Products held together with interlocking resilient members are similarly complex products if the resilient member is designed for disengagement/re-engagement. [Compare the type of locking mechanism on the plastic housing of (for example) a camera which is designed to be removed for camera repairs, with the type of locking mechanism on a cable tie – which is not designed to be undone.]

Where the components are held together in a manner that prevents physical separation – such as by being welded, riveted or glued – prima facie the product does not contain parts that permit disassembly/re-assembly. Where an owner wants to argue that the component parts are replaceable even though they are welded, riveted or glued (for example), the owner will need to demonstrate that the product is capable of being disassembled/re-assembled – for example, by showing the commercial availability of component parts for replacement purposes, or a declaration from a repairer or other relevantly qualified person.

The mere fact that something is ‘replaceable’ does not make the product a complex product. For example, merely gluing a ‘replacement’ sole onto the worn sole of a shoe does not involve disassembly/reassembly of the shoe. In contrast, if a discrete layer of the sole of the shoe is removed and replaced with a new sole, there has been disassembly/reassembly.

It may be noted that the concept of a complex product is a question of fact, not intent. That is, if one manufacturer makes a product as a single unitary product – prima facie that product is not a complex product. However, if another manufacturer devises a way of replacing a component part of that product via some form of disassembly/re-assembly, that product (as a matter of fact) is a complex product.

For a complex product, design protection is separately available for the component parts as well as the assembled whole. This can raise difficulties if the representations indicate different components of a product – is the design application in respect of one design (the assembled product) or plural designs (the assembled product and/or individual components)? This would typically be resolved at the formality check stage, in the context of establishing the number of designs being applied for in the application (and the corresponding filing fee.) Once the design has been registered, the effect of s.66(6) is that:

• If the design has been registered in respect of the whole complex product, it cannot be amended to be in respect of a particular component of that complex product;

• If the design has been registered in respect of an element of the complex product, it may be amended to be in respect of the complex product per se [but only to the extent the relevant features were disclosed in the original representations].

[See D010.5]

Where the design is in respect of an element of a complex product:

• the product is that element per se. Where the product identification makes reference to the complex product, the issues of indications of intended use as discussed in 4.3.1 above are relevant.

• Issues of newness and distinctiveness are assessed on the basis of the product (element) in isolation from the complex product. That is, the newness or


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distinctiveness of the complex product as a whole is irrelevant to the newness or distinctiveness of any of its component parts.

Example: For a complex product held together with screws, the screws themselves would constitute a component part of a complex product. However those screws might be very ordinary screws, and as screws they do not acquire newness or distinctiveness merely by being a component part of a complex product that is new and distinctive.

It should be noted that manufacturers may make a product using components supplied by other manufacturers. Assuming the contractual arrangements allow the other manufacturer to manufacture and sell those components to other persons, those components are products in their own right – irrespective of whether the product in which they are assembled can be disassembled.

In the examination context, the issue of whether the product is an entire product, or a component part of a complex product, only has relevance when assessing newness and distinctiveness. Where there is a citation whose relevance depends on that interpretation and it is not clear which is correct, the examiner will (in the first instance) object on the basis of the interpretation that gives rise to the ground for revocation. [See D03.9]

D04.3.5 Indefinite dimensions

In the early ‘90’s there were two Federal Court decisions that found that a design depicting an object of uniform cross-section but indefinite length was not registrable – Bondor v National Panels 23 IPR 289, and Brisbane Aluminium v Techni Interiors 23 IPR 107. The basic concept was that overall shape was the basis of design protection, and that an item having an indefinite dimension did not have a particular shape. S.18(3) of the 1906 Act was inserted expressly to overcome those decisions. In its review, the ALRC recommended further elaboration of the criteria for things involving indefinite dimensions [Recommendation 15], and these have been implemented in s.6(3).

It is important to appreciate that the practical effect of the ‘indefinite dimensions’ provision is to create a departure from the normal rule of comparing the appearance of the product as a whole; if the product meets the criteria of s.6(3) the appearance along the indefinite dimension may be partly or wholly irrelevant to the newness or distinctiveness of the design (or to whether a particular product is an infringement.)

Example: where a design is simply in respect of the cross-section of an extrusion, the design would not be new having regard to any of the following extrusions having the same cross-section: * an extrusion with holes or patterns formed along its length; * an extrusion where the cross-sectional shape remains the same, but the size varies along the length of the extrusion; * an extrusion having the same cross-section which forms an arc along its length. [That is, the indefinite dimension need not necessarily be a linear dimension.]

The provisions of s.6(3) have been drafted to cover a range of situations where indefinite length is involved. In particular, things where:


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• the indefinite dimension applies to the entire length of the product – such as simple extrusion;

• the indefinite dimension applies to only part of the article – such as the body-section of a bottle, or the panel section of a door; and

• the indefinite dimension applies to part of an article in two dimensions – such as the width and height of a window frame.

For a thing involving indefinite dimensions to be treated as a product under the Act, one or more of the following criteria must be satisfied:

a. a cross-section taken across any indefinite dimension is fixed or varies according to a regular pattern.

Examples are:

• simple extrusions having no variation in cross-section shape or dimension;

• extrusions that have a variation in the cross-sectional shape or dimension, as long as there is a repeating pattern along the indefinite dimension. (Example – a metal beam with a repeating pattern of holes along its length.) Note that newness and distinctiveness can properly reside in the repeating pattern along the length rather than the shape of the cross-section.

• things where part of the thing along that dimension is indefinite – such as a bottle with a mid-section of indeterminate length. In this situation the requirement regarding variation according to a regular pattern applies to the section that is indicated to be of indeterminate length.

Note that a product that is indefinite in two or more dimensions will not meet this criterion if the cross-section in one dimension intersects with the cross-section in another direction – as in this situation the cross-section in at least one of those dimensions is not fixed.

b. all the [indefinite] dimensions remain in proportion; This provision applies to products where the indefiniteness occurs in two dimensions.

The reference to ‘all’ dimensions requires plural dimensions, and excludes a single indefinite dimension. Indefiniteness in 3-dimensions, together with the requirement for the dimensions to remain in proportion, is no more than the general proposition that size is not a distinguishing factor.

Examples are:

• a tube where the cross-sectional width and height varied randomly along its length – but the width and height remained in constant proportion.

• a window frame with both the width and height being indicated as indeterminate.

c. the cross-sectional shape remains the same throughout, whether or not the dimensions of that shape vary according to a ratio or series of ratios; An example would be a tube where the cross-sectional shape remained the


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same, but the width and height of the tube varied along its length. This differs from (a) in that there is no requirement for a repetitive pattern along the length. In particular, (c) does not apply to extrusions where there are holes or the like along the length of the extrusion. It may be remarked that in this situation a lack of repetitiveness along the indefinite length means that there is no relevant pattern or ornamentation in that dimension. Consequently the newness and distinctiveness must reside in the cross-sectional shape per se.

d. it has a pattern or ornamentation that repeats itself. This is intended to apply to textiles and other sheet material whose surface decoration repeats. The representations must show at least one pattern repeat for this to apply.

The provisions for ‘indefinite dimensions’ exist solely to ensure validity of designs involving an indefinite dimension – contrary to the Bondor decision. In practice, the main issues are:

• in formalities: correctly identifying how many products are present in the application;

• in examination: newness and distinctiveness inherently cannot reside in the relative size of the indefinite dimension.

It must be remembered that where the representation purports to indicate indefiniteness, but the thing does not fit within the criteria of s.6(3), the thing is still a product capable of registration. However the representation must be interpreted on the basis of the relevant dimensions not being indefinite. That is, the examiner will need to assess what dimensions an informed user would associate with any portion indicated as being indefinite. But even in this situation, the indication of indefiniteness is a clear indication that newness or distinctiveness does not reside in the relative size of the portion indicated as indefinite.

D04.3.6 Kits

S.6(4) provides:

“A kit which, when assembled, is a particular product is taken to be that product”.

There are two aspects to this provision. [See ALRC recommendations 17 and 53.]

Firstly, in situations where design protection is sought in respect of a kit of parts that may be assembled (for example, a model airplane kit – as distinct from those kits which are a mere collection of objects such as a first-aid kit), the assembled kit is taken to be the product. In the event that the representations do not show the assembled kit, the examiner will need to visualize the assembled kit. Note 4.5.3.

The second aspect relates to infringement. Potentially a competitor might try to avoid infringement by selling a set of components which, when assembled by the purchaser, produces a product that infringes the design. That is, the purchaser commits the act of infringement by assembling the product, not the manufacturer. Commercially, pursuing the purchaser for infringement would usually not be sensible – the design owner would want to stop the manufacturers/distributors/retailers of the components. S.6(4) has this effect; it


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treats a kit of components as being the final product – thereby exposing the manufacturers/distributors/retailers to infringement proceedings.

Note that the concept of a kit in s.6(4) is expressly linked to items which, when assembled, make up a product. Furthermore, s.6(4) requires the product to have been assembled from the kit – that is, the product does not comprise any other elements. Accordingly many items sold commercially as ‘kits’ are not kits within the meaning of s.6(4). For example,

• a first-aid kit – which is merely a collection of individual objects; they are not designed to be assembled to make a product;

• a ‘car body kit’ – being a collection of items for addition to a car. The items are not assembled together to form a product, but attached to another product.

For such things, design protection by way of a single design may be available if the requirements of a common design are met. See D04.3.7.

For consideration of newness and distinctiveness, it is important to remember that the registration is in respect of the appearance of the assembled kit. Consequently it is insufficient to show that all the components of the kit are individually known, or that they are known to exist as a collection that could be assembled to make the particular product. Rather it is necessary to establish that the components would be assembled to make the relevant product – either by reason of associated instructions, marketing material, or because they would inevitably be assembled to make the particular product.

D04.3.7 Common designs and multiple products

A single design application may be in respect of a common design in respect of more than one product [s.22(1)(b)], and it can proceed to registration as a single registration [s.39(2)(b)]. The principle reason for proceeding with a Common Design is the fee advantage associated with a single application/registration.

Inherent in registration as a common design is (subject to any specific contrary indications):

• the features of ‘the design’ are those features that are in common between the representations of the various products; and

• the features of the products are those features that differ between the representations of the various products.

Typically common designs are sought in respect of products that are related in some manner. For example, a common design applied to a range of lounge chairs having different seating configuration. Or a design applied to a ‘real’ car and a toy car. In both of these examples, the design exists in 3 dimensions. Where a common design is asserted in respect of a 3-dimensional product and a two dimensional product (for example – a car, and an image of that car on a shirt), the common design is necessarily limited to the features in common. In particular, 3-dimensional elements of the design on the car that are not evident on the image on the shirt cannot form part of the common design.

The fact of a common design is an express recognition that the product to which the design is applied is of secondary importance to the design. This is particularly important when considering the search strategy – where it is important to identify those areas where a citation will most likely be found. Amendments to delete a design from a common design


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under s.66(3) are likely to be allowable – but must be considered carefully because of the potential effect on the identification of the design. [See D010.5]

Occasionally applicants will file multiple applications for similar designs/products. Unlike Common Designs, each design must be interpreted on its own. It is not permissible to interpret a design by having regard to designs in a different application – even if they were filed by the same owner and on the same day. See D04.1.2.


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D04.4 Overall appearance, and visual features

Design, in relation to a product, means the

overall appearance of the product resulting from one or more visual features of the product.

[see definition in s.5]. Section 7 of the Designs Act provides a definition of a visual feature, in three parts; the first defines what can be a visual feature, the second refers to function or purpose and the third defines what cannot be a visual feature. Most notably, the definition is an ‘inclusive’ definition – in that anything that can be properly described as a ‘visual feature’ is included unless it is excluded by reason of s.7(3). These are discussed below.

D04.4.1 Overall appearance resulting from …

It is important to understand that the Act deals with the issues of appearance in two different ways:

• when determining the subject matter of a design, the criterion is the overall appearance of the product…..;

• when determining whether a design is distinctive, the criterion is the overall impression of the design.

This part of the manual is concerned with the issues of the overall appearance of a design – that is, the subject matter of the design. Issues relating to the impression created by the design [s.16(2) and 19(1)] are dealt with in Part 9.3 of this manual.

It is important to recognise that the design right is not in respect of the overall appearance of the product per se. Rather, it is the overall appearance that results from one or more visual features. [s. 5 definition of design]. Sometimes the relevant visual features relate to the product as a whole – and in such circumstances, the ‘appearance of the product’ is identical to ‘the appearance of the product resulting from one or more visual features’. More commonly, a design relates to a particular visual feature (or group of features) applied to a product that has other visual features. In such circumstances, the design is NOT the overall appearance of the product per se. Rather it is the overall appearance of the product that results from the particular visual features.

The ALRC clearly intended Design rights to exist in individual features present in a product, and not be limited to the overall appearance of the product resulting from a range of features. See paragraph 4.2, which states: “All aspects of a product’s visual appearance should be capable of protection. This can be captured as defining a design as one or more of the visual features of a product.” (Emphases added). Where there are other visual features that affect the overall appearance of a product, the criteria of s.19(2)(c) become relevant to assessing whether the particular visual features give rise to distinctivenss.


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Where a design is based on specific visual features present on a product, the nature of the design can be identified by notionally comparing the overall appearance of the product with, and without, the relevant visual features.

For the purpose of identifying the design, even the smallest features are relevant. However when assessing distinctiveness one must have regard to the ‘overall impression’ – in which case minor features in the design will fail to create distinctiveness if they do not significantly impact on the ‘overall impression’. See D09.3.

In typical situations, a product will inherently have visual features that are not part of the Design. These features will typically be indicated in the representations in some generic fashion – such as by the use of dotted lines. In such situations, the visual features represented by the dotted lines do not represent visual features of the design as such – they are merely indicative of the product’s generic features, and assist in assessing the overall appearance of the product resulting from the visual features that form the basis of the design. See D04.5 for interpreting representations.

D04.4.2 Visual feature - shape, configuration, pattern and ornamentation

Under Section 7(1) a visual feature, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product. Note that this is an inclusive, not exhaustive, definition. However s.7(3) excludes the feel, the materials used, an indefinite dimension per se, and the existence of a repeating pattern per se – largely for the avoidance of doubt. [See D04.4,.6] Consequently a visual feature is any characteristic that falls within the general ambit of being a visual feature that is not excluded by s.7(3).

Taken as a whole the features of shape, configuration, pattern and ornamentation usually encompass most of the visible qualities of a product. That is, those features would embrace the two and three-dimensional aspects of a product, including any visual surface texture (but not the feel). However it is never necessary to decide whether a feature is a particular one of shape, configuration, pattern and ornamentation. Rather, the feature is a visual feature if it can be properly described as being any one or more of shape, configuration, pattern and ornamentation.

Under the 1906 Act, the concept of ‘shape, configuration, pattern or ornamentation’ was of great importance as the exclusive requirement for the subject matter of a design. (See the definition of Design in S.4 of the 1906 Act.) Under the 2003 Act a design is not so limited. If a design relates to a shape, pattern, ornamentation or configuration, it does have appropriate subject matter. However subject matter may also exist for a design in respect of a visual appearance that does not relate to shape, pattern, ornamentation or configuration. As a result, case law under the 1906 Act distinguishing between shape, configuration, pattern or ornamentation [such as Kestos v Kempat Ld (1936) 53 RPC 139 at 152, Re Rollason's Registered Design (1898) 15 RPC 441 @ 446] are no longer of relevance.

While it is undoubtedly the case that there is a relationship between the aesthetic appeal of a product and its visual appearance, the question of whether or not a design has aesthetic appeal is an irrelevant consideration. The relevant criterion is simply that of distinctiveness –


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with ugliness and attractiveness equally giving rise to distinctiveness. [This issue is discussed in more detail in D07.6.3.2.1, in the context of the Copyright overlap.]

It may be noted that colour is inherently a visual feature. Similarly, texture and surface finish – to the extent that they are visible rather than felt – are visual features. In this respect, it is important to note that a design relates to the ‘look’ of a product, not the ‘feel’ of a product. See D04.4.7.1.

See ALRC recommendation 8. The government response considered that the features of ‘colour’ and ‘surface’ did not add anything to the definition – that is, were inherently included in the concept of a visual feature.

D04.4.3 Variable visual features

Many products have elements of inherent variability. As stated in Reckitt Benckiser (UK) 76 IPR 781 at para 10:

… design protection is for the overall appearance of a product, not of its material of manufacture. Some products have a component of appearance that inherently depends on use (for example, an item of clothing such as a jumper ‘looks’ different depending on whether it is folded, hung on a clothes hanger, or worn). Other products are fundamentally static in appearance (for example, a hammer). In assessing a design, the informed user would recognize that features of variability that are inherent in the product are not per se visual features of the design, and duly discount the effects of such variability from the overall impression of the design. But for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown.

It should be noted that the appropriate form of protection for innovations dependant upon elements of variability is likely to be a patent,

In Reckitt Benckiser (UK) 76 IPR 781, the design related to a soap tablet involving a water-soluble skin and a dependant skirt. The cited trade marks showed a similar tablet with a crumpled skirt. The delegate concluded (para 13): • In the trade marks, the skirt might be described as a crumpled depending skirt that may be rounded at the corners. In the designs, the skirt is similarly depending. The representations indicate some degree of undulation, but with the skirt not having significant rounding at the corners. It is also clear from the representations of both the designs, and the trade marks, that the crumpling is not an ordered or structured crumpling with a fixed pattern. Rather it has the appearance of random crumpling that arises when there is an excess of material. It therefore seems to me that any difference in the appearance of the skirt is merely one of degree – not one of significant difference in form or appearance.

It may also be the case that a visual feature of a design will significantly change upon use of the product. That changed appearance is not relevant to the considerations of newness and distinctiveness of the product before use, and the design protection will not extend to the used product having a different overall impression. As stated in Reckitt Benckiser (UK) 76 IPR 781 at para 10:


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‘… for products that do not have an inherent variability of appearance, there is no basis for an informed user to assess the visual features on any basis other than in the form shown. In this regard I stated in Reckitt Benckiser Inc [2008] ADO 1:

In particular, the informed user standard is not a constraint on whether a particular item of the prior art can be considered – its role is limited to the standard to be applied when determining whether the design is distinctive having regard to a particular item of the prior art.

To this I would add that the informed user standard also is not a mechanism to incorporate speculation on how an otherwise invariable product might change in appearance as a result of use. At most, an informed user recognizing that a visual feature might change as a result of use might accord lower significance to that feature when assessing the overall appearance of the design. However any specific changed appearance is only part of the prior art base if that changed appearance has been separately published, or if there is evidence of use of the product in Australia in a manner that resulted in that changed appearance (see s.15(2)(a) - designs publicly used in Australia).’

D04.4.3.1 Graphics on electronic screens

The visual features of the product must be assessed in the context of the product ‘at rest’, as opposed to ‘in use’. Some of the more dramatic applications of this rule arise in electrical goods that include a visual display.

The ALRC report notes [at 4.30 – 4.32] that the fact that a computer monitor displays icons in use does not m of the monitor any more than printer output provides the visual appearance of the printer. The ALRC then sta

Screen displays should not be able to be protected as designs. It is not necessary to include any spec legislation to confirm this.

The confidence by which the ALRC stated its position appears to derive from a strand of precedent extendin summarised in the joint judgement of the full bench of the High Court in Firmagroup: ‘The only design featur are those features which convey the idea of “one particular and specific appearance...”’ [Firmagroup Australi (Vic) Pty Ltd (1987) 180 CLR 483, 488.] This reasoning was also applied the first time the question of registrability of visual features displayed on the before the Designs Office:

… the applicant's designs are displayed on a computer screen, I doubt that the viewer would see the hardware associated with the computer as being characterised by those designs, since he or she transitory and that the hardware is still the same hardware as it was before the design was displayed are transitory they do not give a "particular individual and specific appearance" to the computer scree designs as characterising the software rather than the hardware. Thus, whilst there may be some arg are generally "applicable" to a computer screen, I think that they are not "applicable' within the meanin Incorporated (1991) 23 IPR 145, 147]

While there remains no decided case under the Designs Act 2003 that goes directly to this issue, two Design are consistent with the above reasoning. Microsoft Corporation [[2008] ADO 2]. held that a font alone does n Later on in Somfy SAS [2011] ADO 4, the Hearing Officer’s obiter dicta indicate that, while the images displa of passing the pre-registration formalities check, he considered they were unlikely to ‘survive examination.’ [

In practice examiners will need to carefully assess the design as it appears on the Register to ascertain whether, on balance, the relevant visual features are produced by software.


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In the case of a display screen this is generally very likely to be the case. Visual features that are displayed on, for example, the screen of a computer monitor through the operation of software do not exist when the computer is switched off.

Alternative findings open to the examiner may be that the relevant visual features exist as permanent markings such as paint on the surface of the screen, or that some visual features are permanent while others are transient.

In cases of doubt, the examiner will object that the design is not distinctive (see also D09.1.1) and seek clarification from the owner.

D04.4.4 Functional purpose

S. 7(2) provides that a visual feature may, but need not, serve a functional purpose.

In many instances the shape of a product is dictated by a functional purpose. For example, the spout of a water jug might have a particular shape to prevent the water from dribbling when pouring. The fact that a visual feature has a functional purpose, or indeed has an appearance that is entirely dictated by a functional purpose, is irrelevant to the question of whether that feature is a visual feature of the design.

However a distinction must be drawn between a specific shape that has a functional purpose, and a principle of design to meet a functional purpose. [Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483, 487]

There must be a specificity of the visual appearance of the product conveyed by a registrable design. Features of a design that do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform, and which are consistent with a variety of particular shapes in articles copying those features, are not amenable to protection.

In circumstances where a feature is displayed in a multiplicity of appearances, the issue will usually result in a conclusion that either:

i. there is more than one specific design disclosed – corresponding to each of the individual appearances of the feature, or

ii. the multiplicity of appearances of the particular feature is only consistent with that feature being indicative of generic features of the product, and not a visual feature of the design. [That is, distinctiveness of the design cannot result from that feature.]

The relevant form of protection for a functional purpose per se is a patent. If having applied for a design, the applicant wants to apply for a patent: • The Australian design application is not a Convention application for the purpose of an Australian patent application. [However the applicant might wish to seek professional advice about whether filing an application under the Patent Cooperation Treaty could avoid this issue.]; • The design is published when it is Registered – with that publication being available to anticipate any subsequently filed patent application. However the Grace period provisions of regulation 2.3(2) under the Patents Act may be available.


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Updates

Where this situation arises, the applicant should be urged to seek professional assistance – as the issues are potentially complex and costly

D04.4.5 Internal features as visual features

The concept of a visual feature in the 2003 Act extends to features that are not visible in normal use. Thus internal features of a product are protectable as a design to the extent that they are visual features as opposed to other types of features (eg tactile features, materials of construction etc). The fact that the visual features are not normally visible in normal use of the product is not per se relevant.

This arises from recommendation 27 of the ALRC, which expressly recommended that the design of the internal shape of a product should be capable of protection provided it meets the novelty and distinctiveness requirements. The ALRC considered this would be achieved by removing the criterion of ‘judged by the eye’ from the test for newness and distinctiveness – which has occurred in the 2003 Act.

However, while the internal shape of a product may be proper subject matter for a design, the fact that it is internal to the product has a bearing on the assessment of distinctiveness under s.19, where regard must be had to the overall impression [s.19(1)] by an informed user [s.19(4)]. In particular:

• Where the product is one which in normal use is ‘opened’ such that internal features become visible, the overall impression would clearly have regard to those internal features.

As in, for example, Gramaphone Company Limited v Magazine Holder Company (1910) 27 RPC 152, where regard was had to the appearance of a gramophone player when the lid was raised. Also, the appearance of a doll in a ‘jack-in-the-box’ device.

• Similarly where the internal features of the product became apparent in normal use – even though the product is destroyed in the process. [See, for example, Ferrero’s Design [1978] RPC 473, in which the internal appearance of a confectionary egg only became visible when the egg was broken for consumption].

• However where the internal appearance does not become apparent during normal use, (for example – the internal construction of a sealed lead-acid battery) the internal appearance cannot contribute to the ‘overall impression’ gained by the informed user. That is, such internal visual features cannot give rise to distinctiveness.


Although colour is not specifically referred to as a visual feature in s.7, there is little doubt that colour is a visual feature. See, for example, the Government response to recommendation 8 of the ALRC report into the Designs System.


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The Government response to ALRC recommendation 8, dealing with the definition of ‘visual features’, was: • Accepted in part – the Government considers the features of ‘colour’ and ‘surface’ do not add anything to the definition and may cause confusion and lead to designs losing registration.

The practical issue is the effect of colour when assessing distinctiveness. For example, in the case of two objects bearing the same shape and configuration but differing in colour – will the difference in colour be sufficient to establish distinctiveness? In Review 2 v Redberry Enterprise [2008] FCA155, Kenny J adopted the views expressed in Smith, Kline & French Laboratories Ltd’s Design Application [1974] RPC 253 at 261 – to the effect that the significance of colour to the design depended on the circumstances – and in particular the assessment by the informed user.

D04.4.6.1 Colour as used in representations

A particular issue is the significance of colour in the representations of the design. This is assessed from the perspective of the informed user – having regard to the prior art. If colour is important, it is because factors relevant to the design or the drafting style lead to that conclusion.

For example, where a design is characterised by a surface pattern, and the representations show that pattern in colour, it would be appropriate to treat the specific colours as being visual features of the design – unless there is a statement of newness or distinctiveness (or some other clear reason) to conclude that the colour was not a visual feature. [In Reckitt Benckiser Inc [2008] ADO 1 and Reckitt Benckiser N.V [2008] ADO 3 amendments were made to remove any doubt that the colours shown in the representations were visual features of the designs.]

In Review 2 v Redberry Enterprise [2008] FCA155, Kenny J stated: 50 The applicants placed some emphasis on the fact that Parliament did not adopt the recommendation in ALRC Report No 74 that "visual features" should include "colour and surface": see ALRC Report No 74, recommendation 8, at p 60. As the commentary to the recommendation noted, however, the addition of "colour" to the conventional list that included "pattern" and "ornamentation" was not strictly necessary. Whilst "colour" is not specifically mentioned in s 7 of the Designs Act as a distinct element of "visual feature", colour might in some instances be regarded as a "visual feature", having regard to the inclusive formulation of s 7(1) and the continued reference to pattern and ornamentation. 51 Ultimately, it seems to me that what was said in Smith, Kline & French Laboratories Ltd’s Design Application [1974] RPC 253 at 261 is as true a guide as any. In this case, Graham J (as the UK Registered Design Appeals Tribunal) said that: ... colour cannot be ignored, though normally differences in colour are unlikely to be important. Colour may or may not make a material difference, depending upon the circumstances and nature of the design in question.


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Updates

I would adopt this approach in considering designs registered under the Designs Act. 52 The fact that a design is registered in colour through the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given. Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration. The pattern (including colour) that is shown on the registered Review Design is thus part of what is protected, and is, as the above reasoning indicates, to be accorded some weight. How much weight is to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated already, pattern, including colour, is a feature that an informed user would consider has some significance in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application.

D04.4.7 What cannot be a visual feature

Section 7(3) sets out three exclusions from being a visual feature of a product.

The exclusions of feel, and of the materials used, derive from recommendation 9 of the ALRC report, which recommends that the look of a surface be protectable, but not the surface material or the feel of the surface. The exclusion of certain aspects relating to indefinite dimensions is supplementary to the indefinite dimension provisions of s.6(3).

D04.4.7.1 the feel of the product:

The feel of the surface – whether that is a feeling derived from texture, tactility, smoothness/grip, hot/coldness – is excluded by s.7(3)(a) from being a visual feature of the design (and is therefore not protectable per se under the Designs Act.) However the visual appearance of a product may derive from the surface finish applied to that product – and that appearance is protectable.

In examination there is no objection per se to the fact that a design or its associated documentation purports to assert newness or distinctiveness in the feel of the product. When assessing newness and distinctiveness, any such assertions are to be disregarded. However if a citation is raised where the assertions would be relevant, the examiner should include in the objection an explanation to the effect:

The asserted newness or distinctiveness based on the feel of the product is not a visual feature under s.7(3)(a), and therefore cannot provide a basis of distinction from the citation.

D04.4.7.2 the materials used in the product:

The visual appearance of a product may derive from the material used in the manufacture of that product – and that appearance is protectable. However the material used is excluded by


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s.7(3)(a) from being a visual feature of the design (and is therefore not protectable per se under the Designs Act.)

In examination there is no objection per se to the fact that a design or its associated documentation purports to assert newness or distinctiveness in the material used to make the product. When assessing newness and distinctiveness any such assertions are to be disregarded. However if a citation is raised where the assertions would be relevant, the examiner should include in the objection an explanation to the effect:

The asserted newness or distinctiveness based on the material used to make the product is not a visual feature under s.7(3)(a), and therefore cannot provide a basis of distinction from the citation.

D04.4.7.3 in the case of a product that has one or more indefinite dimensions:

i.the indefinite dimension ii.if the product also has a pattern that repeats itself – more than one repeat of

the pattern

This exclusion arises as part of the special provisions for products involving one or more indefinite dimensions. Its purpose is to ensure that when a design involves an indefinite dimension, or a repeating pattern – the fact of the indefinite dimension, or repeats of the pattern, does not constitute a visual feature, and therefore cannot be used to establish distinctiveness over another product.

For example, in a bottle containing a segment of indefinite dimension (the mid-section), the length of that segment is not a visual feature of the design. Consequently the design would not be new and distinctive over a bottle having all the other features of the bottle but with that segment being of a particular length. Conversely, the design would be potentially infringed by that bottle having a segment of particular length.

For patterns, the exclusion only arises in the context of a pattern on a product having one or more indefinite dimensions. [This exclusion does not arise in respect of pattern repeats on a product of finite dimensions.]

• A pattern repeating in one dimension might entail a repeat unit of fixed size which is repeated in that one direction – in which case the design rights reside in the repeating unit. Or it might entail a pattern that is of indefinite dimension in one direction (eg a pattern of repeating stripes) – in which case the indefinite dimension (the length of the stripes) is also not a visual feature.

• In the case of a pattern repeating in two dimensions, the design rights reside in the repeating unit.

• In principle, a repeating pattern may be comprised of sub-elements that themselves entail repeating elements. However, such sub-elements are of finite size within the overall pattern – and are thus not separately subject to this exclusion.

That is, the indefinite dimension does not provide a visual feature. Where there is a repeating pattern, the visual feature is a single base unit of the pattern – and if that base unit has an indefinite dimension (eg a pattern of stripes) their indefinite dimension is not a visual feature.


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D04.5 Interpretation of representations

D04.5.1 Drafting styles

The representations are a critical element of any design registration. They constitute the primary means of setting out the visual features which provide the basis for the design. They also assist with the identification of the product (which is otherwise stated on the application form) to which the visual features are applied. And they assist in identifying the overall appearance of the product resulting from the application of the visual features. Accordingly a proper interpretation of the representations is critical to the assessment of the design rights.

In Review 2 v Redberry Enterprises [2008] FCR 1588, it was stated (paragraph 52):

Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration.

The decision goes on to state:

The pattern (including colour) that is shown on the registered Review Design is thus part of what is protected, and is, as the above reasoning indicates, to be accorded some weight. How much weight is to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated already, pattern, including colour, is a feature that an informed user would consider has some significance in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application {emphasis added}.

That is, when assessing a design it is necessary to interpret the representations and the relative importance of the different visual features.

There are no ‘hard and fast’ rules for how a design application is to be drafted. In particular, the only substantive requirements in Schedule 2 about how representations are to be drawn are:

• Originals and copies of drawings must be executed in durable, black, dense, dark, uniformly thick and well-defined lines and strokes without colouring [5(8)];

• cross-sections must be indicated by oblique hatching…. [5(10)]

It should be noted that the requirements in Schedule 2 are essentially drafting guidelines. In the formalities [regulation 4.04(1)(g)] the requirement is one of ‘substantial compliance’, with the primary consideration being the reproducibility of the representations. Compliance of the originally filed documents with the formality requirements is not an issue that can be raised during examination. Formalities issues can only arise in examination in respect of documents filed at that time – and are dealt with under reg 11.27 rather than the examination process per se.

Furthermore there is no international standard for how representations are to be drawn, yet in practice the representations of a design are frequently drafted in different jurisdictions to


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support design applications in multiple countries – and such representations are filed in support of Australian designs.

Consequently there is great variation in how representations are drawn to represent a design. There are no mandatory rules to interpreting drafting elements in a particular way – although there is a strong presumption that when elements are represented in a different manner, it is for a purpose. Each design has to be considered objectively on its merits.

In Review 2 v Redbury Enterprises [2008] FCR 1588, the Designs was said to be ‘depicted on the register in a colour photograph of a store dummy wearing a garment…’. There was no controversy about the role of the dummy – it being understood by all parties that the dummy was not part of the design, even though it was present in the representations.

There will be times where it is difficult to ascertain the design from the representations and other documents – either in understanding the nature of the product, or understanding the visual features of the design. The Designs Act does not include a ground of revocation based on clarity of the representations. As a result, in such circumstances the examiner MUST come to a view about the scope of the design – applying the standard of the informed user. However, examiners should note that the fewer the visual features of the design the broader the monopoly, and hence the broader the prior art base that may be relevant to the design. Accordingly the examiner should:

• in the first instance, construe the design broadly, and develop a search strategy on that basis (with a focus on obtaining citations with the least effort);

• include a file note about how they have construed the design; and

• in any adverse report, advise the owner about how the design has been construed.

The following provides guidance on some of the typical variants that occur in representations.

Dashed v solid lines

A common situation involves some elements of the representations being shown in solid lines, while other elements are in broken (dashed or dotted) lines. Broken lines are frequently used to indicate things such as:

• elements of the product other than those bearing the visual features of the design;

• boundaries (e.g. of a pattern applied to part of a surface);

• stitching;

• perforations;

• hidden elements (typically in perspective views);

• features that establish an environmental context;

• features outside the scope of the design (such as the store dummy in Review 2 v Redberry Enterprises referred to above.

Indeed, rarely a drafter might use dashed lines to indicate the visual features of the design, and solid lines to indicate generic features of the design.


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Updates

In all instances, the examiner needs to interpret the representations in the context of the design as a whole, applying a presumption that differences in the manner of representation of features is for a purpose, and make this assessment in the context of the standard of an informed user.

Highlighting/shading/Colour

Sometimes some or all of the visual features of a design will be highlighted in some manner – eg colour, shading, cross-hatching. At other times that highlighting may be used to indicate features of the product that are not visual features of the design. Examiners will need to exercise judgement in interpreting the representations, with due consideration to the product name and any statement of newness and distinctiveness.

D04.5.2 The nature of representations

Representations are just representations of the design, and are not the design per se. In Sportservice Pty Ltd [2007] ADO 6 it was stated:

…it is important to recognize that a design is ‘the overall appearance of the product resulting from one or more visual features of the product’ – as per s.5 of the Act – and that the assessment of newness and distinctiveness required by s.19 is of the design. On the other hand a representation is ‘a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen’ – s.5. While a specimen might typically be a product embodying the relevant visual feature, drawings are not. A drawing is used to ‘represent’ the product and the visual features; it allows the design to be comprehended. Consequently, it is important to recognise that the level of visibility of visual features in representations (considered as drawings) may be different (that is, either more or less visible) from the level of visibility in a real product bearing the visual features. And the assessment of distinctiveness must be conducted on the basis of the design (that is, products bearing the visual features) applying the standard of a person who is familiar with the product to which the design relates – not on the basis of a simple comparison of representations.

In the Sportservice case, the delegate noted:

…the collar as shown in the representations looks quite inconspicuous. The collar as existing on a ‘real’ product was more conspicuous than the representations suggest. I have closely compared the representations with the actual product, and I’m satisfied that the representations do accurately represent the actual product.

As the feature appeared more prominent in the actual product than in the representations per se, and the representations were a fair representation of the actual product, the delegate could not be satisfied there was a lawful ground of revocation.

However the representations must be a fair representation of the actual product – as otherwise the product will embody a different design to that shown in the representations (and will therefore be of no utility in assessing the overall impression of the design shown in the representations.)

There is no doubt that when assessing infringement, the comparison to be made is of the


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infringing product and the design. See LED Technologies v Elecspess [2008] FCA 1941 at paras 74, 75. However it is necessary to determine the scope of the design – and this requires consideration of how the design would appear on ‘real’ products. Importantly, reference to the real product behind the design is only relevant (if at all) for appreciating the effect of visual features on the overall appearance of the product.

D04.5.3 Unclear representations

There may be times where the representations are particularly difficult to understand, either because of complexity in the representations, or because of lack of clarity in the drafting processes.

In LED Technologies v Elecspess [2008] FCA 1941, it was argued that the design should be revoked under s.120 (1) of the Designs Act because the visual features of the registered design are unclear and are thus invalid. The judgement appears to accept the possibility of revocation on that basis – even though this ground of revocation does not exist in s.93 (dealing with revocation generally) or in any other provision in Chapter 7 of the Act, and section 120 is concerned with rectification of the register (which prima facie is about correction rather than revocation.)

Examination under s.65 is limited to the grounds of newness and distinctiveness, as well as the issues of s.43 of the Act. Assuming the decision in LED Technologies v Elecspess is correct in contemplating revocation under s.120 if the representations are unclear, that ground of revocation is not available under examination.

Where an examiner has difficulty in interpreting the representations, they nevertheless need to interpret the representations as best they can. In such circumstances, if the representations are reasonably open to be construed consistently with relevant prior art – an objection of lack of distinctiveness should be raised.

It may be noted that the decision of LJ Fisher v Fabtile Industries (1978) 1A IPR 565 [referred to in LED Technologies v Elecspess at para 41] is fully consistent with the representations needing to be interpreted, with the interpretation being (in the context of the 2003 Act) that of the informed user. While Fisher v Fabtile suggests (at page 571) that:

I am clearly of opinion that a registered design in order to be valid, must be reasonably “clear and succinct”,

the Designs Act 2003 does not impose any such requirement per se.

The Fisher v Fabtile decision notes a warning ‘against importing too readily into designs law principles of patent law, without any authority in the legislation itself’, citing Gramophone Co Ltd v Magazine Holden Co (1911) 28 RPC 221 at 226. Neither the Designs Act 2003 nor the Designs Act 1906 contain any requirement that the representations be ‘clear and succinct’ – either in the Act, the body of the regulations, or the schedule setting out the formal requirements. The requirement of being ‘clear and succinct’ has been an express requirement in patent law since the Patents Act 1952, deriving from the UK Patents Act 1949. Since the design right is primarily dependant upon the representations, arguably this importation of a patent concept is no more than an expression of the self-evident fact that an effective design right depends upon the representations adequately setting out the design.


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Updates

Where representations are difficult to interpret, the ability to assess newness, distinctiveness and infringement are necessarily compromised. In examination, it is appropriate to interpret ambiguous or unclear representations in a manner consistent with possible citations from the prior art base. In infringement proceedings, a court might additionally decline to award damages under the innocent infringement provision of s.75(2).


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D04.6 Role of a Statement of Newness and Distinctiveness

The Statement of Newness and Distinctiveness arises in s.19(2)(b) in the context of assessing the design for distinctiveness. Its origin is recommendation 50 of the ALRC report, which stated:

Where a visual feature that is claimed to be new and distinctive relates to only part of the product, the court should pay particular attention to that part of the product but only in the context of the whole of the product.

To illustrate what it had in mind, the ALRC gave an example of a cup with a handle:

… if a cup is designed with a new and distinctive handle, the design owner will be able to register the design of the cup and identify the handle as the new and distinctive feature for which protection is sought. If a competitor takes the handle and places it on a differently shaped cup, the court will be directed to consider when determining whether the exclusive right has been infringed whether the design of the new cup is substantially similar in overall impression to the design of the old cup, paying particular attention to the designs of the handles in each case but not disregarding other parts of the cup. The design of the handle would only be considered in isolation from the cup if the handle was a component part that was a product in its own right and the design was registered as a design for that product, not for a cup.

The ALRC recommended that such statements be required for all designs – Recommendation 47. However the Government response was that while applicants should have the option to provide such a statement, it should not be mandatory.

To understand the effect of a Statement of Newness and Distinctiveness, it is important to understand that:

• A statement does not derogate from the need to assess distinctiveness of the design in the context of the overall impression of the product bearing the design. For example, if a visual feature is insignificant in the overall impression of the product bearing the design, specifying that feature in a statement does not alter that fact;

• The wording of some statements is intended to assert that the design is based on only certain types of visual features defined in s.7(1). For example, by asserting that the design ‘relates to the features of shape or configuration’ (only), the owner is asserting that elements of pattern or ornamentation are to be given less regard and may not provide distinguishing features (either for distinctiveness, or infringement).

• Where the statement identifies particular visual features that apply to the whole of the design, the effect is to narrow the scope of the design. For example, if the statement indicated that the surface of the product was a particular colour the design right would be limited to products of that colour.

• Where the statement identifies features that relate to only part of the design, distinctiveness is assessed having particular regard to those features – albeit in the context of the design as a whole [s.19(2)(b)(ii)]. In this situation, the statement functions to distinguish between the visual features of the design, and features that are generic to the product. That is, such a statement may result in the design being of broader scope than might otherwise be the case.


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Updates

The considerations under s.19 that arise from a statement assume that the statement is a positive assertion with respect to certain features. If a statement is worded as a negative statement (for example, that certain features in the representations are not part of the design) the statement will be interpreted as a positive statement with respect to all the other features of the design shown in the representations.

When identifying the design, it must be remembered that the design and statement should be interpreted on the basis of a presumption against redundancy – that is, a presumption that the statement sets out something that is additional to the information contained in the representations and product name. The presumption against redundancy means a reasonable interpretation that does not involve redundancy is to be preferred over an interpretation that involves redundancy. However, situations where the interpretation depends on the principle of a presumption against redundancy are expected to be very rare.

D04.6.1 Illustrative statements

D04.6.1.1 Ambit statements

Many of the statements included with applications filed in the first few years of the 2003 Act are problematic, and may best be described as being ambit statements. In Reckitt Benckiser Inc [2008] ADO 1 the Deputy Registrar had to construe the following Statement:

Each feature of the design considered separately or in combination with any other feature or features.

The Deputy Registrar noted that:

The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents.

A fundamental difficulty with this interpretation is that after registration the statement cannot be amended in any effective manner – see D10.2.2 and D10.6 – such that almost inevitably a design containing such a statement would be revokable based on the fact that just one of the visual features (when considered alone) is known. That is, this approach to interpreting such statements leads to a result that was clearly not contemplated by the applicant.

To deal with this situation, the practice of the Registrar is to interpret such ambit statements as a reference to the combination of all visual features of the design as shown in the representations.

It may be noted that this interpretation may result in the statement adding nothing to what is shown in the representations. If an owner asserts that such a statement is intended to identify just some features shown in the representations, it is appropriate to respond by:

• interpreting the statement literally;

• identifying a particular feature of the design that is known; and


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• objecting to the newness or distinctiveness of that feature,

with an expectation that the objection will lead to revocation of the design.

D04.6.1.2 Descriptive statements

Statements provided by self-represented applicants can pose their own difficulties. Frequently they will provide some form of general description of the design without any particular emphasis on particular visual features, and without adding anything to what is disclosed in the representations.

A significant issue with such statements is the presumption against redundancy. As a general principle, a statement should be interpreted as providing something additional to that disclosed by the representations.

Where it is clear that the statement is intended to be no more than a textual description of the design, and adds nothing to the disclosure of the representations, it is appropriate to conclude that the statement is redundant over the representations. That is, the statement has no effect on the scope of the design.

However where a statement places an emphasis (no matter how small) on the presence (or absence) of particular visual features, the design should be interpreted on that basis.

D04.6.1.3 Limiting the design to one or more of Shape, Configuration, Pattern or Ornamentation

S.7 defines a visual feature as including ‘the shape, configuration, pattern and ornamentation’ of a product. It may be observed that a ‘real’ product necessarily has features in addition to shape and configuration. For example, the colour of the material that the product is made from, or any pattern applied to the product.

Sometimes statements are provided in the following form:

Newness & distinctiveness resides in the features of shape & configuration of the product as shown in the reps.

The intention of such statements is to make clear that the visual features of the design are limited to features of shape and configuration – irrespective of any pattern or ornamentation that might be applied to a product bearing the design.

Such statements may be intended to ensure that in infringement proceedings, infringement of a design based on shape and configuration is not avoided merely by having the product bearing a particular colour or some ornamentation. However it correspondingly ensures that any citation that has the relevant shape and configuration cannot be distinguished on the basis of its pattern or ornamentation (or any other visual feature).

A particular variation is a statement such as:

Newness & distinctiveness resides in the features of shape and /or configuration of the product as shown in the reps.

Such a statement can be notionally rewritten into three distinct versions – that newness and distinctiveness resides in:

• Shape


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Updates

• Configuration

• Shape and configuration

In such situations, the design might be anticipated by a product having the same features of shape but a different configuration, or the same features of configuration but with a different shape (as well as a product having the same features of shape AND configuration).

D04.6.1.4 Statements referring to all the features of the design

A statement of the form:

Newness and distinctiveness resides in the features of the design as shown in the representations

adds nothing to the design over what is shown in the representations. Such statements are entirely redundant.

Statements of this form may have been provided in a belief that this would ensure the existence of a statement that could be amended after registration. However statements cannot be amended after registration (see D10.2.2).

D04.6.1.5 Methods of manufacture or use

Sometimes a statement will refer to how a product bearing the design is manufactured or used. Since a design relates to the overall appearance of a product, methods of manufacture or use are irrelevant to determining the scope of the design.

In principal, a method of manufacture or use may be relevant if that method or use inevitably gave rise to a particular visual feature. However the design would be characterised by that particular visual feature per se – irrespective of the processes used to create that visual feature – and should be indicated in the representations if at all possible. Assuming the statement was present at filing, its primary effect is to establish a disclosure to support an amendment under s.66, rather than affecting the assessment of the overall impression per se.

D04.6.1.6 Statements of assertion

A statement like:

‘The shape and configuration of {the/an item shown in the representations} is new and distinctive’.

cannot be interpreted as a statement that the relevant feature is new and distinctive as a matter of fact – that is a matter for objective assessment. Such a statement is to be interpreted as identifying those features which the owner believes are new and distinctive.

D04.6.1.7 Statements referring to features not shown in the representations

All visual features of a design should be indicated in some manner in the representations. A statement can operate so as to qualify a visual feature in some manner (eg by specifying that it has a particular colour), but an indication that a portion may be of indefinite length (for


36


example) should be apparent from the representation. Occasionally statements refer to features that are entirely peripheral to the design as shown in the representations. Note that a textual description of a feature not indicated in the representations is likely to be no more than an expression of a principle of design to meet a functional purpose [see D04.4.4] and as such it would not constitute a statement of newness and distinctiveness as defined in s.19.

If the statement was present at filing, it may provide a basis for amending the design to include the peripheral features. However the amendment must not include matter that was not in substance disclosed in the original design application, representation and other documents [s.66(6)(b)].

D04.6.1.8 Features not otherwise visible

The assessment of distinctiveness is necessarily based on features that contribute to the overall impression. The person making that decision must have regard to a statement of Newness and Distinctiveness. However a statement cannot operate to render a feature that otherwise does not contribute to the overall impression, to a feature that does contribute to the overall impression. See for example Apple Computer Inc [2007] ADO 5, at para 20; while that case was concerned with ‘freedom to innovate’, the principles apply equally to a statement of newness and distinctiveness.


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Chapter 5 - Designs which must not be registered

Table Of Contents D05 Designs which must not be registered - s.43, Reg 4.06 ..................................... 1

D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b) ............................ 2

D05.2 Integrated circuits [s.43(1)(c)] ......................................................................... 4

D05.3 Medals [reg 4.06(a)] ........................................................................................ 5

D05.4 Protection of Word 'Anzac' Regulations .......................................................... 6

D05.5 Paper money, securities [reg 4.05(c)] ............................................................. 8

D05.6 Scandalous designs ........................................................................................ 9

D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)] ............................................ 11


iii

D05 Designs which must not be registered - s.43, Reg 4.06

Pursuant to s.34 and reg 4.06, the Registrar must refuse to register certain designs. Under regulation 5.02, if such a design that has been registered it is subject to revocation during examination.

Date for assessing compliance with s.43

Section 43 is considered as part of the formality check, and in examination under s.65. It is not a ground of revocation available to a court. By the terms of s.43, the relevant date for assessing compliance with s.43 is the date of registration of the design – not the priority date of the design. As a result, in principle it would be possible for circumstances under s.43 (especially certain circumstances referred to in reg. 4.06) to arise after the design was filed, but before registration – thereby precluding registration. On the other hand, circumstances arising after registration has occurred are outside of s.43 considerations.


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D05.1 s.18 of the Olympic Insignia Protection Act 1987 s.43(1)(b)

S. 18 of the Olympic Insignia Protection Act provides:

18. The Registrar shall not register under the Designs Act 1906: a. a protected design; b. a design incorporating a protected design; c. a design that differs from a protected design only in immaterial details or in

features commonly used in a relevant trade; or d. a design that is an obvious adaptation of a protected design.

The dictionary to the Olympic Insignia Protection Act provides the following definitions:

"protected design" means each of the following:

a. the design of the olympic symbol;

b. a registered olympic design;

c. a registered torch and flame design.

"design of the olympic symbol" means the design that, when applied to any article, results in a reproduction of the olympic symbol.

"olympic symbol" means the symbol an outline of which is set out in the Schedule.

The outline of the olympic symbol is:

"registered olympic design" means a design registered under the Olympic Insignia Protection Act in relation to an artistic work that incorporates the olympic symbol.

"registered torch and flame design" means a design registered under the Olympic Insignia Protection Act in relation to an artistic work that is or incorporates a prescribed olympic torch and flame.

The designs registered under the Olympic Insignia Protection Act as at 1 July 2008 (together with their expiry date) are as follows:


2


OD 010 27 Sept 2013

OD 011 1 Nov 2014

OD 016 22 Jul 2021

OD 017 27 Apr 2015

OD 018 27 Apr 2015


3


D05.2 Integrated circuits [s.43(1)(c)]

s.43(1)(c) prescribes designs in relation to a product that is an integrated circuit within the meaning of the Circuits Layouts Act 1989, part of such a circuit, or a mask to make such an integrated circuit.

The Circuits Layouts Act defines an "integrated circuit" as:

a circuit, whether in a final form or an intermediate form, the purpose, or one of the purposes, of which is to perform an electronic function, being a circuit in which the active and passive elements, and any of the interconnections, are integrally formed in or on a piece of material.

A "circuit layout" is defined under the Circuits Layouts Act 1989 to be:

a representation, fixed in any material form, of the three-dimensional location of the active and passive elements and interconnections making up an integrated circuit.

The integrated circuit is required to be "…integrally formed in or on a piece of material." ‘Integrally’ requires the element be formed as an inseparable part of the piece of material. Typically integrated circuits are formed with deposition and etching of multiple layers. Monolithic IC devices have a semiconductor die with doped and etched regions formed in a piece of semiconductor (the die) and subsequently interconnection layers etc are deposited. Silicon-on-sapphire devices have a thin semiconductor layer formed on a piece of material (sapphire), with the semiconductor layer being subsequently doped and etched with further layers deposited for interconnections etc.

An ‘integrated circuit’ is defined as "a circuit in which the active and passive elements...". This implies a plurality of components - so that a single transistor die would not be an integrated circuit. However a plurality of only active components, or only passive components (e.g. resistors), forming a circuit could be an integrated circuit. Similarly an integrated Darlington pair (two interconnected transistors) is an integrated circuit within this definition, even though it tends to be thought of as a transistor rather than an integrated circuit.

That is, the Circuit Layouts Act relates to the pattern of circuitry on the surface of the semiconductor contained in an Integrated Circuit (commonly referred to as a ‘chip’). The exclusion under the Designs Act relates to some or all of the pattern on the chip, or to the ‘masks’ used in the manufacture of the chip. [In the manufacture of an IC, light is shone on the surface through a Mask to generate the required circuitry patterns.] The exclusion does not relate to:

• the plastic housing containing the chip [note ALRC recommendation 18], or the pin layout.

• Printed circuit boards. [It should be noted that a printed circuit board per se does not have active or passive elements, and is therefore not an integrated circuit. When components are added to a printed circuit board (eg by the application of surface-mounted resistors, transistors etc), those elements are formed elsewhere and could not be said to be "formed in or on" the circuit board. Consequently circuit board layouts (whether or not populated) are not prescribed – and may be the subject of Design registration.]


4


D05.3 Medals [reg 4.06(a)]

The Macquarie dictionary defines a medal as:

A flat piece of metal, usually in the shape of a disk, star, cross, or the like, bearing an inscription, device, etc, issued to commemorate a person, action or event, or given to serve as a reward for bravery, merit, or the like.

The dictionary also defines a medallion as being ‘a large medal’ [Note: medallion also has a distinct meaning in architecture, which is outside the concept of medals.]

Any design that is in respect of a ‘medal’ – whether or not it is called a medal or medallion – must be refused pursuant to reg 4.06(a). It should be noted that medals may, or may not, have accompanying ribbons attached to them. The presence or absence of such ribbons does not alter the fact of it being a medal.

The assessment of whether the design is in the class of medals is performed objectively. Thus where a design is referred to as being a medal, but on an objective assessment it is not a medal within the scope of r4.06(a), no ground of revocation exists under that provision. The only issue that arises is whether the identification of the design to which the product relates is adequate – and that is dealt with as for any other product.


5


D05.4 Protection of Word 'Anzac' Regulations

Under Regulation 2(4) of the Protection Of Word 'Anzac' Regulations (which are made under the War Precautions Act Repeal Act 1920), the Registrar is obligated to refuse to register as a design any word or mark, if the use of that word or mark is prohibited under regulation 2(1) of those regulations. The prohibition relates to the word ‘Anzac’ or any word resembling the word ‘Anzac’.

Prohibition of use in trade etc of word 'Anzac'

(1) No person shall, without the authority of the Minister, proof whereof shall lie upon the person accused, assume or use the word 'Anzac' or any word resembling the word 'Anzac' in connexion with any trade, business, calling or profession or in connexion with any entertainment or any lottery or art union or as the name or part of the name of any private residence, boat, vehicle or charitable or other institution, or any building in connexion therewith.

(1A) Subregulation (1) does not apply to the assumption or use of the words 'Anzac Day' in connection with an entertainment held on 25 April in any year or on consecutive days that include that day where those words are not used to describe or designate single events within an entertainment consisting of 2 or more events.

(2) Without limiting the meaning of subregulation (1) a word shall be deemed to be assumed or used by a person in connexion with any trade, business, calling or profession if:

(a) it is applied (whether as a trade mark or otherwise) to any goods manufactured, produced, sold or offered for sale by that person; or

(b) it is used as the name or part of the name of any firm or company registered in Australia.

(3) The Registrar of Trade Marks shall: ……

(4) The Registrar of Designs shall:

(a) refuse to register as a design any word or mark the assumption or use of which in connexion with any trade, business, calling or profession is prohibited under subregulation (1) of this regulation; and

(b) unless otherwise directed by the Minister cancel any existing registration of any such word or mark as a design, and refuse to take any step or further step in connexion with any application for the use of any such word or mark as a design.

(5) ….

Note that the exclusion relates both to the word ‘Anzac’ per se, and any word that resembles ‘Anzac’. And the exclusion relates to the use of the word alone, or in association with other material.


6


A design containing the word Anzac (or words resembling Anzac) can proceed to registration if there is authorisation from the Minister for Veterans Affairs (who is the minister responsible for the relevant Act). But it is up to the owner to establish the existence of that Authority.


7


D05.5 Paper money, securities [reg 4.05(c)]

Designs of a kind referred to in s. 19(1) of the Crimes (Currency) Act 1981 cannot be registered. That section relates to:

“a business or professional card, notice, placard, circular, hand-bill, poster or other material that so resembles current paper money or an Australian prescribed security as to be capable of misleading a person into believing it is that current paper money or that Australian prescribed security.”

Paper money is defined as:

"paper money" means money comprising a note written, printed or otherwise made on paper or any other material.

and thus includes plastic notes as used in (for example) Australia and New Zealand.

A prescribed security is defined as:

"prescribed security" means any bond, debenture, stock, stock certificate, treasury bill or other like security, or any coupon, warrant or other document for the payment of money in respect of such a security, issued by the Commonwealth of Australia, by an authority of the Commonwealth of Australia or by, or with the authority of, the government of a country other than Australia.

Note that while the prohibition in relation to securities is limited to Australian securities, the prohibition against paper money applies to the money of any country. Also, the prohibition does not extend to coins.

The mere fact that a design contains a representation of currency does not trigger this prohibition. The representation must be such that a person could be misled into thinking that the design involved actual money (or security).

It should be noted that there is no prohibition on the registration of designs for coins. However a product that is similar to a coin may fall within the meaning of medal (see D05.3) – and therefore be excluded from registrability. Where a design impliedly entails defacing current coinage, or manufacturing current coinage, any infringement of other legislation [such as the Crimes (Currency) Act 1981] is the responsibility of the person undertaking those activities; the manufacture or use of a registered design is always subject to compliance with other legislation.


8


D05.6 Scandalous designs

The regulations provide that a ground of revocation is that the design is scandalous, or might reasonably be taken to be scandalous. A scandalous design is one which is shocking or offensive to the public or an individual’s sense of propriety or morality.

In applying this provision, there is a question of what standard of morality or propriety is to be applied. In particular, a design might be viewed as highly offensive to some sections of Australian society, and quite acceptable to others. Accordingly the ground should only be raised if:

• The design would be viewed as scandalous to the great majority of the Australian community (eg child pornography);

• The design would be viewed as scandalous to a minor portion of the community, and it promotes racial or other types of discrimination; or

• The design contains material that is likely to be libellous or defamatory.

Comment: It is difficult to put a comprehensive list of illustrative examples together. Particularly difficult are those situations that only affect a portion of society, and situations where the design might be ambiguous (and the extent to which one alternative ought to be given greater weight than the other). Note that the ground extends to designs that might reasonably be taken to be scandalous. It would seem likely that the ‘informed user’ concept is not appropriate to the test of a scandalous design, as arguably a design would never be scandalous to the relevant informed user. Care also needs to be taken to have regard to the nature of the product. For example, some products may have an appearance designed for a medical purpose yet might be considered scandalous when used outside of that environment; such designs should not be treated as being scandalous. This is in contrast to other products whose scandalous appearance has no purpose other than to provoke a reaction.

This issue has parallels in both Trade Marks and Patent law. Information about how this issue is dealt with is available as:

Trade Marks

The issue has arisen in a number of decisions. See, for example:

http://www.ipaustralia.gov.au/pdfs/trademarks/hearings/999278.pdf

Patents:

• Item 14 of the 3rd Schedule excludes ‘scandalous’ material. This is discussed in Volume 2, para 31.3.2 of the Patent Office Manual of Practice and Procedure;


9


• Rule 9.1 of the Patent Cooperation Treaty excludes expressions or drawings that are contrary to morality, or contrary to public order. This is discussed in 4.29 of the PCT Search and Examination guidelines.

Where the question of the design being scandalous is a serious consideration, the examiner is to refer the case to the Deputy Registrar.


10


D05.7 Arms, flag or seal of Australia, state, territory, city or town, public authority or institution, or another country [reg 4.06 (e), (f) and (g)]

A design that is an existing symbol of a State, Territory, city, town, public authority or public institution in Australia, and any such signs of another country, is not registrable.

A ‘public authority’ is any authority or body constituted by or under a law of the Commonwealth, State or Territory.

It should be noted that the exclusion relates to the whole symbol (or, presumably, anything which appears to be the whole symbol), and not to component elements. For example, although the kangaroo and emu are featured in the Commonwealth Arms there are no restrictions on using kangaroos or emus in other designs.

In situations where the design involves several elements, and one of those elements is a symbol of State (etc), the ground of revocation does not necessarily apply. The question is whether the design as a whole can be said to be a symbol of State.

Comment: Interestingly reg 4.06(e) (f) and (g) define classes of designs that are the flags symbols etc, rather than contain…. As a result the ground of revocation only arises if the design as a whole can be said to be the relevant symbol. Under the 1906 Act, this issue arose as a result of reg 62(2) of the National Security (Supplementary Regulations) [made under the Defence (Transitional Provisions) Act 1946], where the exclusion related to any design that ‘consists of, embodies or contains…” [Note: this Act was repealed in 1999]


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Chapter 6 - Priority Dates

Table Of Contents D06 Priority Dates ................................................................................................................. 1

D06.1 Background, general issues ........................................................................................ 1

D06.1.1 Plural Designs ...................................................................................................... 1

D06.1.2 Multiple bases for Priority .................................................................................... 2

D06.1.3 When must Priority be asserted? ........................................................................ 2

D06.2 Priority date - Convention Applications ....................................................................... 4

D06.2.1 Background ......................................................................................................... 4

D06.2.2 Basic requirements ............................................................................................. 5

D06.2.3 Convention Countries .......................................................................................... 5

D06.2.3.1 Regional applications .................................................................................... 5

D06.2.3.2 New Convention Countries ............................................................................ 6

D06.2.4 The Basic Application ........................................................................................... 7

D06.2.4.1 The Design ................................................................................................... 7

D06.2.4.2 Types of priority applications ........................................................................ 8

D06.2.4.3 First application ............................................................................................ 9

D06.2.4.4 Devolution of title ........................................................................................ 10

D06.2.5 Priority documents ............................................................................................ 10

D06.2.5.1 Requirements of the priority document ...................................................... 10

D06.2.5.2 Translation of the priority document ............................................................ 11

D06.2.6 Requesting the priority document during examination ....................................... 12

D06.2.7 Third-party requests for priority documents ....................................................... 13

D06.2.8 Requests for priority documents – court proceedings ........................................ 13

D06.2.9 The Formalities check on a Convention Application ........................................... 14

D06.2.10 Disregarding certain basic applications ............................................................ 14

D06.3 Priority date - Excluded Designs ............................................................................... 16

D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54).............................. 17

D06.5 Priority date - Converted Applications ....................................................................... 18


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D06 Priority Dates


The validity of a Design is assessed against what was known at a particular point in time – the priority date. [see s.15]. The default priority date for a design is the date of filing the application for the Design in Australia [s.27(1)(a)]. However the date may be an earlier date if:

• The application is a ‘convention application’. That is, there has been an earlier application for the same design filed in a Convention Country [s.27(1)(b), Reg 3.06 & 3.07)]; or

• The design has been excluded from an earlier application under s.23, or an earlier transitional application [reg 12.03(3)] see reg 3.08.

The most common basis for claiming an entitlement to an earlier priority date is that of being a Convention application.

As a general rule, it is only necessary to determine the priority date of a design if there is an anticipating design that was published in the period between the asserted priority date and the filing date. That is, there is no routine need to assess whether all the conditions for being entitled to a priority date earlier than the filing date have been met. Furthermore there is no basis in examination under s.65 to object to the details of the priority claim per se. The only basis for raising issues with the priority claim is in the context of an objection of lack of newness or distinctiveness that depends upon whether the claim to priority is valid. Even then, any issues about the validity of the priority date are raised in the context of argument about the correct priority date – not as an objection to the validity of the priority claim per se.

Sections 35 and 36 govern the time for requesting registration by reference to the priority date of the design. In the first instance, that date will be taken as being the earliest priority date asserted in the application.

Note: If the applicant wishes to assert that the design requested to be registered was disclosed in a later basic application, they will need to justify that assertion.

D06.1.1 Plural Designs

When a design application discloses more than one design, the designs may have different priority dates.

This issue will usually only arise if the application claims convention priority from more than one basic application, and those basic applications were filed on different dates. The consequences are:

• If the different designs are registered, each design may have a different date in the Register;

• If the Designs are excluded from the original application under s.23, the new applications will carry through the particular priority date relevant to the design in that


1


new application. Similarly if the Design is for an excluded design filed pursuant to reg 12.03(3).

D06.1.2 Multiple bases for Priority

The legislation provides several bases for having a priority date. The fact that the design is entitled to a priority date on one basis does not negate entitlement to a priority date on a different basis. Thus in principal a Design could assert separate and independent priority on the basis of exclusion from an earlier design application, and a convention application filed in the intervening period.

In situations where the design has been excluded from an earlier application, and that earlier application claimed convention priority – the priority of the excluded design is assessed on the basis of the excluded designs provisions. (That is, it has the priority date that it had in the earlier application). In particular, while the priority date ultimately derives from a Convention application, the application for the excluded design is not in itself a Convention application. In this situation, where there is a need to determine whether the conditions for claiming convention priority have been met, that must be done with respect to the earlier application. (see D06.3).

D06.1.3 When must Priority be asserted?

It is quite clear from the Act when read as a whole that any assertion of priority is expected to be made at the time of filing – by completing the priority details in the approved form for applying for a design.

s.27(1)(b) does not identify the time period for claiming priority. However the time frame for requesting registration or publication under s.35, and for lapsing under s.33, is specified by reference to the priority date. Similarly the certificate of registration and the notice of registration are required to include the priority details. These provisions are only fully effective if the priority date is known at filing (or, at the latest, by registration.)

If a priority claim is not made at the time of filing, it may be possible to amend the application under s.28 prior to registration to include or correct the priority details. However an extension of time (s.137) will be required to add a priority claim, or if the amendment of a priority claim was equivalent in effect to adding a new priority claim. Additionally if the amendment would result in certain actions (such as requesting registration) being out of time with respect to the new priority date, the owner may need to also file an extension of time request under s.137 to ensure the relevant actions occurred within the time limits determined by the amended priority date.

Amendments to add or ‘correct’ a priority claim after registration have a particular set of difficulties. It must be noted that the addition of a new priority claim may have the effect of converting an otherwise invalid design into a valid design – and this is a very serious matter. Additionally, as the priority date is a critical element in the processes leading up to the registration of the design, an amendment may give rise to the question of whether the design is subject to revocation under s.93(3)(d) – obtained by false suggestion or


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misrepresentation. Any such requests are to be referred to the Deputy Registrar of Designs in the first instance.


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D06.2 Priority date - Convention Applications

D06.2.1 Background

The reference to ‘Convention’ applications is a reference to the International Convention for the Protection of Industrial Property of 1883 as revised and amended. The basic concept of the Paris Convention is that if a person files an application for a design in a country, they can maintain that filing date as their ‘priority’ date in other countries providing they file the application in those other countries within 6 months. [The Paris Convention has similar provisions for trade marks, and for patents – except that for patents the period is 12 months.]

The Paris Convention is a so-called normalising treaty. That is, the legal effects are dictated by how national legislation implements the requirements of the treaty, and not the treaty itself. Accordingly the conditions for ‘convention applications’ are to be found in S.27(1)(b) and regulation 3.06 and 3.07.

In Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 the Full Federal Court was considering the scope of the term ‘official or officially recognised international exhibitions’ in s.47 of the 1906 Act, and stated:

40. Although the 1906 Act does not reveal a statutory intention to give effect to the Paris Convention, it is proper to infer from the coincidence of wording and subject matter that the Parliament had the Paris Convention in mind when enacting s 47. Perhaps it is appropriate to say that it underlies the statutory provision which was the expression used by the Full Court of this Court in what we think is quite a similar case to the present: Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367. At all events, there is no reason why, in appropriate circumstances, the Paris Convention could not be a contextual matter to which reference may be made. Clearly, it could not control the meaning of the statutory words, nor could it be used "to contradict the meaning of the language of an Act of Parliament, that meaning being taken from its proper statutory context": Barry R Liggins Pty Ltd v Comptroller-General of Customs (1991) 32 FCR 112 at 120 per Beaumont J (Lockhart and Gummow JJ agreeing). However, in this particular case, we do not think that Art 11(1) is of any assistance in determining the proper construction of s 47(1). The proper meaning of s 47(1) is revealed by its statutory context (that is, s 47(2)) and there is no need to go to Art 11(1).

In Scaniainventor v Commissioner of Patents (1981) 36 ALR 101; 54 FLR 367, it was stated:

It seems to us plain that what Art 4 provides for has to be understood in the light of the fact that each country has to provide by legislation for the circumstances dealt with. The Treaty arrangements have to be accommodated to the local scene. Moreover, it is open to the municipal law of a country to enact provisions which give effect to those of the treaty in its own way. If the municipal law does not accord with the Treaty (and this can only be decided by an application of ordinary principles), the provisions of the municipal law prevail. The construction of the Treaty itself will be decided, as between nations, according to rules wider than those by which we construe our own legislation. In the present case, we think it was proper and necessary that we became aware of the Treaty background to s 141(1). We have found it illuminating in a general way, but unhelpful in construing the sub-section.


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D06.2.2 Basic requirements

The basic conditions for claiming convention priority are:

• Before the Australian application was filed, a basic application for protection in respect of the design of had been in a Convention country (the convention application).[Section 27(1)(b)]

• A basic application is an application that is made in a Convention country in accordance with the regulations. That is, made in a convention country as defined in Regulation 1.05, or made in one of the regional offices referred to in regulation 3.06(6).. [Reg. 3.06(1)]

The wording of regulation 3.06(1) superficially is open to alternative construction whereby ‘made in accordance with the regulations’ could be read to qualify the making of the application rather than what is a Convention country. However in so far as this interpretation would limit a basic application to one filed before a regional office of reg 3.06(6), it is clearly contrary to the intention of the legislation and to Australia’s obligations under the Paris Convention and other agreements. [Acts Interpretation Act, s.15AA, 15AB.]

• The convention application is made within six months from the date of application of the basic application. [Reg 3.06(2).]

• The convention application is made by the same applicant as the basic application, that applicant’s assignee, or the legal representative of that applicant or the legal representative of that applicant’s assignee. [Reg. 3.06(2)]

D06.2.3 Convention Countries

For an application to claim convention priority, the earlier application must have been filed in a ‘convention country’ – s. 27(1)(b). Regulation 1.05 defines a convention country as a foreign country that is a signatory to the Paris Convention or a full member of the World Trade Organisation.

For a list of signatories to the Paris Convention see www.wipo.int

For full members of the World Trade Organisation see www.wto.org

Historically, a Convention Country was a country that had signed the Paris Convention. Additionally Australia had a small number of bilateral agreements to treat applications in certain countries the same as convention applications. More recently the TRIPS component of the WTO agreement obliged all members of the WTO to comply with the Paris Convention – irrespective of whether they had become party to the treaty. The term ‘Convention Country’ is now applied to all of the above situations.

D06.2.3.1 Regional applications

In certain regions of the world it is possible to file a design application for protection in a number of countries using one or other of the following: This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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• the Hague Agreement Concerning the International Deposit of Industrial Designs, done at The Hague on 6 November 1925; The International Bureau of the World Intellectual Property Organization (WIPO) administers the protection of Industrial Designs for those countries participating in the Hague Agreement. The list of member states of the Hague Agreement can be sourced on the WIPO website: www.wipo.int

• the Benelux Designs Convention, done at Brussels on 25 October 1966 (the Benelux Convention); Benelux includes the countries of Belgium, the Netherlands and Luxembourg. Note that Benelux itself is not a country, but a region. The member states of the Benelux Designs Convention are Belgium, Netherlands and Luxembourg.

• the terms of the Treaty Establishing the European Community, done at Rome on 25 March 1957; The Office for Harmonization in the Internal Market (OHIM) grants and administers the Community Trade Mark and Community Design throughout the European Union. The member states of OHIM can be sourced on the OHIM website: http://oami.europa.eu/ows/rw/pages/index.en.do

An application filed under any of these treaties is, for the purpose of the Australian Act, almost certainly a basic application [regulation 3.06(1) and (6)]. The fact of it being a basic application is dependant upon an extra condition:

• for an application made under the Hague Agreement, that application must specify a country that is otherwise a Convention country (that is, a country listed in the First schedule);

• for applications under the Benelux Convention, or the Treaty Establishing the European Community Design, that application must specify a country that is otherwise a Convention country (that is, a country listed in the First schedule), and which is bound by that Convention or Treaty (and for which the convention/treaty is in force).

The Registrar has constructive knowledge that the vast majority of applications filed under these three regional agreements meet the relevant extra condition. Consequently the Registrar will assume compliance with that condition unless there is clear reason to believe otherwise in the particular case.

It may be noted that in contested proceedings, an owner relying upon a priority date prior to the Australian filing date bears the onus of establishing their entitlement to that earlier date.

[see reg 3.06(6)]

D06.2.3.2 New Convention Countries

The requirement that the earlier application be made in a Convention Country is assessed as at the time of filing the Australian application. Consequently:


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D06 Priority Dates

• if the foreign country becomes a Convention Country between the time of filing the application in the foreign country and filing in Australia, the application can claim convention priority;

• if the foreign country becomes a convention country after the Australian filing date, the application cannot retrospectively claim convention priority; and

• there is no loss of Convention priority entitlement if the foreign country ceases to be a Convention Country after the application was filed.

D06.2.4 The Basic Application

Registration of a design occurs on the basis of the claimed priority. The examiner will only consider the disclosure of the priority document if there is a relevant citation where the determination of the priority date is critical. If a ground of revocation of lacking newness or distinctiveness is raised, the examiner will need to assert what they consider the priority date to be, and explain why they consider the design is not disclosed in the priority application. No objection about the ‘validity’ of the priority claim is to be raised other than in this context.

Assuming the priority document was on file at the formality check stage, there will be no detailed consideration of whether the priority application is for the same design. The issue will only be raised if it is noticed that the design of the foreign application is completely different to the design of the application – which may lead to the question of whether the correct convention application has been specified. (See D015.2.6)

D06.2.4.1 The Design

Regulation 3.06 provides that ‘basic application’ in respect of a design, means an application for protection of the design, being an application …...

The reference to ‘the design’ is a reference to the design that is under consideration. That is, where there is more than one design in an application, each may have its separate ‘basic application’, and/or some of the designs may have a basic application, and others may not. Similarly it does not matter if there are other designs in the foreign application – so long as the design in question is disclosed in that application.

If more than one design is disclosed in a design application, the designs may have different priority dates [s.27(2)].

The requirement that the foreign application be for protection of ‘the design’ does not require strict identity in the representations of the design. The question is an objective one of whether the designs are the same, not whether the representations of the design are the same. In assessing whether the designs are the same, one approach is to consider whether the design in the foreign application, if publicly available before the priority date, would give rise to the ground of revocation of the design not being new. If so, the foreign application is for ‘the design’ in question.

Comment: The right to priority is linked to the earlier application being for ‘the design’; it does not extend to designs that are substantially similar. The mere fact that the representations are different is not determinative of this issue; the question to be asked is whether or not the representations are of the same design.


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Where there are differences between the priority application and the Australian design, it might be argued that the Australian design is not entitled to the convention priority date – and as a result it lacks distinctiveness over a publication of that earlier design that occurred prior to the filing of the Australian application. As a matter of principle there is a conundrum with asserting a lack of distinctiveness if priority is simultaneously denied. It may be noted that the s.27(1)(b) requirement for priority refers to ‘an application for protection in respect of the design, which is different to the criteria for both newness and distinctiveness under s.16. Examiners should proceed on the basis that if the disclosure of the priority document is sufficient to give rise to an objection of lack of distinctiveness, there is sufficient disclosure to meet the priority requirements of s.27(1)(b).

D06.2.4.2 Types of priority applications

The earlier application must be an earlier application for protection of the design. That is, the rights sought in the foreign jurisdiction must relate to the visual appearance of a product, and not other forms of protection – such as patents for inventions, or trade marks. Importantly, it is the nature of the protection sought that matters, rather that the name of the protection in the foreign country.

Any application in a Convention Country for a form of protection referred to as a Design in that country can form the basis of a priority claim for a Design in Australia.

The US grants a form of protection referred to as a Design Patent. A Design Patent is fully equivalent to a design, and applications for a US Design Patent may form the basis of a convention application.

A number of countries (the most common being Japan and Germany) grant a form of protection referred to as a Utility Model. Art 4E of the Paris convention expressly provides for a Utility Model to form the basis of a priority claim for a Design.

A utility model is more like a patent than a design. However, as Bodenhausen states in his authoritive Guide to the Paris Convention, when commenting on Art 4E:

It will rarely happen that an industrial design and a utility model concern the same subject matter because, in principle, the first concerns the ornamental aspects of an industrial article whereas the latter relates to its technical novelty. However, since it is a matter for national legislation to define these subjects, cases of overlapping may occur. In such cases, on condition that the identity of the subject is preserved, the right of priority can be claimed to obtain a different form of protection.

A US ‘utility patent’ is NOT a Utility Model – it is a ‘standard’ patent. The US does not grant Utility Models.

Australia is not a convention country for the purposes of the Act. [See Schedule 1 of the regulations, which sets out all Convention Countries for the purposes of the Act.]. As a result, convention priority cannot be based on an earlier Australian design application.

Occasionally an applicant may seek to claim priority from a patent application. The validity of such a claim to priority is not straight forward. S.27(1)(b) sets out the base requirement as:

… an application for protection in respect of the design had been made in a convention country…


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(See also the definition of basic application in reg 3.06(1).)

As a general proposition, patents do not provide ‘protection of the design’. This is reflected in the Paris Convention, where Art.4E was inserted specifically to allow Utility Models to be a priority application for a Design. This is to be contrasted with the absence of any equivalent in respect of patents. Accordingly, a patent application is not capable of being a priority document for a design.

The issue of seeking to claim priority from a patent will usually be argued on the merits of a particular case. However the issue is of general importance. In particular, IF a patent application can be a basic application, any applicant who has filed a patent application before a design application, and subsequently files a convention application claiming priority from the design without mentioning the patent, will have an ineffective priority claim [D06.2.4.2]. Accordingly arguments to the effect that a patent application constitutes a priority application are to be considered with great care, having regard to the potential ramifications for other designs. The US system provides for a design application to be filed out of a patent application as a continuation-in-part – which is a form of domestic priority. While this is indicative that the design was disclosed in the patent application, prima facie the patent application was not seeking rights equivalent to a design. Accordingly (and despite the disclosure in the patent application), the continuation-in-part application would be the relevant basic application.

Where an applicant includes a patent application as a priority document, no objection to that fact as such can arise. The issue of the validity of that priority claim only arises when determining whether or not a relevant citation is part of the prior art base. In the first instance, examiners should proceed on the basis that priority cannot derive from a patent application. Any arguments to the effect that the patent application is a valid priority claim are to be referred to a Deputy Registrar in the first instance.

D06.2.4.3 First application

The ‘basic application’ is defined as being the first application filed in a convention country in respect of the Design [reg 3.06(5)]. It may be the case that an applicant will have filed several applications for the design prior to filing the Australian application. But only the first application satisfies the requirement of being the basic application. If the applicant fails to reference the first such application, the claim to Convention priority will be invalid.

However, it must be recognised that at times the applicant may have difficulty in identifying the first basic application. For example, take a situation where the owner files a design in country A. Subsequently he files a design in country B claiming priority from the application in A – but having somewhat different representations. Finally he files in Australia, with representations the same as in B. The question is – which of applications A and B is the first application filed in a convention country in respect of the Design?

The dilemma for the applicant is that if they specify application B (and not A) as the basic application, and it is subsequently determined that the design was disclosed in A, they will have lost all convention priority. Conversely if they specify application A (and not B), and it is subsequently determined that the design was not disclosed in A they will similarly have lost all convention priority. Accordingly it is appropriate to allow the application to claim priority on the basis of both the earlier applications – with the question of which application first disclosed the design being resolved if and when necessary in the context of a relevant citation.


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Note. In this situation, the priority date for the purposes of sections 35 and 36 is taken (in the first instance) to be the earliest of the purported basic applications.

D06.2.4.4 Devolution of title

A person claiming convention priority must have the right to rely upon that application. Pursuant to regulation 3.06(2), persons who have the right to rely upon a basic application are:

• the applicant in the basic application; or

• the applicant’s assignee; or

• the legal personal representative of the applicant or of the applicant’s assignee;

It is the responsibility of the applicant to ensure they have the relevant entitlement. In particular it is not an issue that the Registrar is able to assess in the formalities check or examination.

It may be observed that where there is a problem with the applicant’s/owner’s entitlement to rely on the priority document, there will likely be a dispute about their entitlement to the design in toto.

D06.2.5 Priority documents

The correctness or otherwise of a priority claim is not per se a ground of revocation. The validity of the claim only arises if there is a relevant citation where the determination of the priority date is critical. Accordingly the Designs Act does not require the routine filing of copies of priority documents. Rather the applicant/owner must (only) provide a copy if and when requested by the Registrar. See reg 3.06(3).

If the applicant/owner does not provide the copy of the priority document [including any translations] within 2 months of being requested by the Registrar, the priority claim from that application is effectively lost [reg 3.06(3)]. Note that the time period may be extended pursuant to s.137.

If the priority documents are not provided in that period the convention priority claim will be deleted.

D06.2.5.1 Requirements of the priority document

While the regulations do not require the copy of the basic document be certified by the relevant office, the document must be sufficient to establish the facts to support the priority claim. That is – what was actually filed, at what office, and on what date. Consequently a certified copy from the relevant office is the desirable form of copy of the basic application.

Issues that can arise if a certified copy is not supplied are:

• What is the basis for asserting the document is a copy of that which was actually filed, and (for example) is not a copy of a draft, nor a copy of documents filed in a related application?


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D06 Priority Dates

• What is the basis for asserting that the document was actually filed with the specified Office?

• What is the basis for asserting that the filing date is the date specified? In particular, that it is the date accorded by that office and not (for example) the date the application was mailed to the office. And what is the basis for excluding the possibility that the application was post-dated or ante-dated by the Office?

These questions may be resolvable with appropriate evidence. And it may be necessary to deal with these questions by way of evidence if, by the time the copy of the basic application is requested, the owner is not able to obtain a copy of the basic application from the relevant office because it has been destroyed. However unless a copy of the basic application is not obtainable from the foreign office, a certified copy from the foreign office would be the best way of supplying a copy of the basic application.

Note that it can happen that a basic application can have an effective filing date different from the actual filing date (ante-dating and post-dating). However, when this is the case, there must be supporting documentation.

See La Soudure Electrique Autogene S.A.'s Application, (1939) 56 RPC 218 and Poly-Resin Products Ltd.'s Application, (1961) RPC 228.

Where an owner provides a basic application that is not a certified copy from the foreign office, the examiner should consider whether they are satisfied that it definitively establishes what was filed at which office on what date. If they are not satisfied, the owner should be requested to provide clarification or further evidence (or a certified copy) – failing which the Registrar may conclude that a copy of the basic application has not been supplied.

Where the owner has obtained a certified copy of the basic application from the foreign office, it is not essential that they provide that copy. They may file a photocopy of that certified copy of the basic documents, provided the copy has been certified (by any person referred to in reg 11.26(2)) as a true copy of the original.

D06.2.5.2 Translation of the priority document

Regulation 11.18 provides that any document filed in a language other than English must be accompanied by a translation into English with a certificate of verification. Accordingly a basic document that is not in English must be accompanied by a translation into English.

A certificate of verification means “a statement, dated and signed by a person, to the effect that the translation is, to the best of the knowledge of the person, a true and complete translation of the accompanying document”. [reg 11.18(4)] An illustrative form of verification is:

______________________________________________________________ VERIFICATION OF TRANSLATION I (name and address of translator or other signatory) ............................................................................................ state that attached document is a true and complete translation of ............ .............................................to the best of my knowledge and belief. Signature of translator or other signatory.......................................... Dated:............................................................. ______________________________________________________________


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Comment: Where a verification of a translation is given by a person other than the actual translator, it is assumed that the person concerned has a basis for attesting to the accuracy of the translation in the terms indicated above. The Registrar would not normally query that person’s competence.

The translation must ‘accompany’ the basic document. In normal circumstances it would be expected that the priority document and the translation would be filed at the same time. But they do not have to be physically attached – it is sufficient that the correct association of the two documents is readily apparent. This is particularly important if the translation is not filed with the basic document.

Examiners should not check the correctness of any translation, even when they happen to be familiar with the foreign language involved. However if there is a relevant citation where the determination of the priority date is critical, the translation is relevant to that determination, and the examiner has good reason to believe the translation is in error, the matter should be raised in association with the justification for the existence of a ground of revocation.

D06.2.6 Requesting the priority document during examination

During examination, a copy of the priority document is only required if there is a relevant citation where the determination of the priority date is critical. Accordingly examiners will not routinely request a copy; they will only request a copy if there is a relevant citation.

Where the need for the priority document arises, the examiner will:

• Request a copy of the priority document in the examination report. The request will specify a period of two months to file the documents. [Reg 3.06(3)]; and

• Raise a ground of revocation based on the relevant citation and an assumption that the priority date is the Australian filing date.

Note: if the report is a further report, this will trigger an extension of the period for completion of examination under Reg 5.04(b)(iv) where appropriate

If the owner responds to the examination report before the time for filing the priority document has expired, and does not file a copy of the priority document at that time, a further examination report should issue maintaining the relevant ground of revocation (assuming the ground is still considered to exist if the relevant priority claim is ‘lost’). The examiner should remind the owner of the earlier request for a copy of the priority document – and not make a new request (to avoid any confusion about when the two-month period for filing the priority documents expires).

If the Registrar requests a copy of the priority document, the owner must file a copy to avoid loss of the priority claim. Submissions to the effect that the priority application is not required, or that the request should not have been made, or that the objection based on the potential loss of priority is wrongly taken, do not negate the request for a copy of the basic application or avoid the consequence of failing to provide a copy. Note that the cost to the owner for


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obtaining a certified copy of the basic application may be non-trivial – and examiners should not be frivolous in requesting a copy of the basic application.

If the owner needs an extension of time to obtain a copy of the basic application from the relevant country, they may also need to request an extension of the time for completion of examination.

Note: While both matters might be included in a single request under s.137, this may result in the extension sought exceeding 3 months – with a consequential need for advertisement [s.137(4)] and potentially an extra extension period and fees to cover this period.]

D06.2.7 Third-party requests for priority documents

Where the owner has not filed a copy of the priority document, it is not on the file for inspection by third parties. However there is a clear public interest in third parties being able to view the priority document for a registered design (to be able to assess the validity of the Design.)

Where a third party wants to view a priority document of a registered design, and that priority document is not on file, the Registrar will:

• request the owner provide a copy of the priority document; and

• advise the requestor that the priority document is not on file, that the owner has been requested to provide a copy (on the particular date), and that a copy will be supplied to the third party if and when the owner files it with the Registrar.

Any correspondence on the file of a registered design is publicly available (and thus available to the owner.) Third party competitors will typically not want to make themselves known to the owner as a consequence of making a request for the priority document. As a consequence, it may be expected that requests for priority documents will not identify the ‘real’ third party, but come via an agent.

Where a design has been published rather than registered, the priority date has no significance. Accordingly the Registrar will not request the applicant provide a copy of the priority document. It should be noted that if the Registrar did request the applicant provide the priority document, there are no adverse consequences or penalties if they fail to file it.

If it appears to the Registrar that a person (or group of persons) is requesting priority documents for inappropriate purposes, the Registrar may require the requestor to justify why the owner should provide the priority documents before requiring the owner to provide a copy. For example, if the request is for the priority documents of many unrelated designs.

D06.2.8 Requests for priority documents – court proceedings

Where a priority document is required in court proceedings, and the priority document is not on file, the matter will be dealt with by the parties by way of directions in those proceedings.


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It should be remembered that the default priority date is the date of filing the application in Australia – and if the owner wishes to assert an earlier date, the burden of establishing entitlement to rely on that date lies with the owner.

D06.2.9 The Formalities check on a Convention Application

For an application to be in accordance with the approved form, a convention application must include the following details:

• The date the basic application was made in the convention country,

• The number of the basic application, and

• The country (or country code) where the basic application was made.

Where only some of these details are (legibly) provided, the application is not in accordance with the approved form, and a Failed Formalities Notice is sent. Note that if the fields are completed but the information is erroneous (eg wrong document number, or filing date), there is no failure to comply with the approved form.

No check is made into the validity of the convention claim either at the time of filing the application, or at the time of filing the basic application. That issue is considered if, and only if, there is an actual need to determine the priority date.

There is no requirement for a copy of the basic application to be lodged prior to registration. If the basic application is filed, it is merely placed on file.

The majority of applications claiming convention priority are filed close to the end of the 6th month priority period. Since registration/publication must be requested within six months of the priority date (Designs Act subsection 35(2), Designs Regulation 4.01), a convention application will typically need to include that request at the time of filing to avoid the application lapsing shortly after (or even at) filing for not making that request in time. [See Reg 3.14]

It should be noted that where an application has lapsed as a result of missing this time period, the lapsed status cannot be undone by merely requesting amendment of the Request to delete the convention priority claim. The only mechanism to restore a lapsed application is an extension of time under s.137. That is, where the application has lapsed for failure to request registration or publication within 6 months of the priority date, the applicant must seek an extension of time either to request registration or publication, or to amend the Request to delete the priority claim.

D06.2.10 Disregarding certain basic applications

It is often the case that an applicant will have filed several applications for the design prior to filing the Australian application. In this situation, the ‘basic application’ is the first such application filed in a convention country [reg 3.06(5)].


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For the purpose of determining the first application, the Paris Convention makes provision for disregarding certain applications – which is enabled in reg. 3.07. The conditions for disregarding an earlier application are:

• the earlier application must have been filed in the same Convention country as the otherwise ‘earliest’ application;

• at the time of filing the Australian application, that earlier application must have been either withdrawn, abandoned or refused, AND not open to public inspection; and

• the earlier application must not have been used as the basis for claiming a right of priority in a Convention country.

[see reg 3.07(1)]

An applicant may request the Registrar to disregard the earlier application. [Reg 3.07(2)] While regulation 3.07(3) suggests that the registrar MUST disregard the earlier application, this merely is an indication that the Registrar does not exercise any discretionary powers once the necessary conditions have been established. That is, the Registrar must first be satisfied that the conditions [of reg 3.07(1)] have been met. Where the Registrar is not satisfied that the conditions have been met, she will advise the applicant, and allow them an opportunity to file further material in support of the request.

Where the Registrar is satisfied that the conditions precedent for making the request have been met, she will record on the file the fact that the earlier application is to be disregarded.

The regulation is specific in providing the applicant with the possibility to have an earlier application disregarded. Consequently, such a request cannot be made after the design has been registered.

Comment: This is the prima facie position. It should be noted that a disregardal made after Registration may have the effect of converting a wholly invalid Design into a valid Design – with there being no compensation arrangements for 3rd parties who have taken the Design to be invalid.


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D06.3 Priority date - Excluded Designs

Under s23, an applicant can file an application for a design that has been excluded from an earlier application by way of amendment under s.28.

Providing the new application meets the requirements of s.23, the priority date of the design in the new application is the priority date it would have had in the earlier application.

The requirements are that at the time of filing the new application:

• the design had been deleted from the earlier application

• the deletion must have occurred under s.28, and not by way of a withdrawal under s.32(2);

• the earlier application was not lapsed; and

• NONE of the designs in the earlier application had been registered or published

Where there is a need to determine the priority date of such a design, and the above requirements have been met, the required determination is the priority date of that design in the earlier application as at the time the new application was filed.


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D06 Priority Dates

D06.4 Priority date - Applications by an entitled person (s.52, 53 or 54)

The Designs Act includes 3 sections (52, 53 and 54) that deal with situations where a person asserts that the applicant or owner is not entitled to the design. These sections provide a mechanism for a determination of the dispute – and the Registrar or Court may make a declaration to the effect that a specified person (or persons) is an entitled person with respect to the Design.

Where such a person files an application with respect to that design within the period of 3 months from the date of that declaration, the design has the same priority date as it had in the application in which it was first disclosed. [see s.55]

Consequently where there is a need to determine the priority date of such a design, the required determination is the priority date of that design in the earlier application as at the time the relevant declaration was made.


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D06.5 Priority date - Converted Applications

Under s.159, a transitional application can be treated as a converted application. The priority date of a design disclosed in a converted application is the same priority date as it had under the transitional application [s.160(3)]. Consequently the conditions for claiming (in particular) Convention Priority are those of the 1906 Act.

The significant differences from the requirements under the 2003 Act are:

• The applicant must provide a copy of the basic application prior to registration – including a verified translation if the basic application is not in English.

• The basic application must be certified "by the official chief or head" of the designs office of the Convention country (section 49 of the 1906 Act).


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Chapter 7 - Prior Art Base

Table Of Contents D07 Prior Art Base .................................................................................................... 1

D07.1 General Information/Background .................................................................... 1

D07.2 Publicly used in Australia ................................................................................ 2

D07.3 Published in a document within or outside Australia........................................ 3

D07.3.1 Document ............................................................................................. 3

D07.3.2 Published ............................................................................................. 4

D07.3.3 Within or Outside Australia ................................................................... 4

D07.3.4 Establishing publication date ................................................................ 4

D07.4 Designs disclosed in applications .................................................................... 8

D07.5 Exhibitions, Unauthorised disclosures ........................................................... 10

D07.5.1 Exhibitions .......................................................................................... 10

D07.5.2 Unauthorised disclosures .................................................................... 12

D07.5.3 Disclosures to the Commonwealth, a State or a Territory................... 13

D07.6 Copyright overlap - s.19 ................................................................................ 14

D07.6.1 Introduction ......................................................................................... 14

D07.6.2 General Approach in examination ...................................................... 14

D07.6.3 S.18 issues – more detailed discussion ............................................. 18


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D07 Prior Art Base

D07.1 General Information/Background

The prior art base is the information against which a design is assessed for newness and distinctiveness. Section 15(2) defines the prior art base as consisting of:

1. designs publicly used in Australia; and

2. designs published in a document within or outside Australia; and

3. designs in relation to which each of the following criteria is satisfied:

• the design is disclosed in a design application;

• the design has an earlier priority date than the designated design;

• the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.

Importantly, the definition of the prior art base identifies the designs which can be individually compared with the design. As was stated in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at para 21:

newness and distinctiveness are to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art. Put another way, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new or distinctive.

The prior art base is determined at the point in time immediately before the priority date of the Design. Note that there is no exclusion of ‘old’ material from the prior art base – thus a 19th century publication of a design is equally part of the prior art base as a late 20th century publication.

There is no difference in the prior art base for proceedings before the Registrar, and proceedings before a court. However whereas a court will only consider material put before it by the parties, the examination function will result in the Registrar making her own investigation of the prior art base to assess whether the design is new and distinctive.

Comment: The prior art base under the 2003 Act is considerably larger than the equivalent concept under the 1906 Act.


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D07.2 Publicly used in Australia

S.15(2)(a) refers to ‘designs publicly used in Australia’. That is, actual application of the design to products rather than documentation illustrating the design. To establish a ground of revocation based on prior public use, it is necessary to establish:

• what was actually used;

• when that use occurred; and

• the use was a public use.

In examination before the Registrar, there are serious potential difficulties in establishing a prior public use of a design. In particular, an assertion by a third party, whether that be by way of statement, declaration of affidavit, is no more than an assertion – it is not proof of that use, or of the details of the use. Conclusions about prior use would usually only be reached after hearing evidence from both parties, with witnesses being potentially subject to cross examination. Consequently if the issue is raised in examination, it may be the case that it can only be properly dealt with by way of a hearing under s.67(3). In any event, the ‘proof’ of any prior public use will need to be clear [see, for example, Seiller's Application, [1970] RPC 103].

In limited circumstances it might be possible to clearly establish the elements of the prior use by way of documentary material. For example, a newspaper report published after the priority date reporting a demonstration that occurred before the priority date. However care needs to be taken to ensure that all elements necessary for this ground of revocation are in fact properly established.

For a use to be a public use, the use must have taken place in a manner where a member of the public would have been freely able to ascertain the design. Note that it is not necessary to establish that any such person actually ascertained the design – it is enough to show that a person could have freely ascertained the design.

Where the use occurs before people who have all made confidentiality undertakings, that use is not a public use. Note that where the use occurs before fellow employees, there will usually be implied confidentiality arising from the fiduciary obligations of the employees to the company.

Publication by use at an Exhibition may be excluded from the prior art base – see D07.5 Exhibitions.

Where the issue is raised in a request for examination, and the examiner is satisfied that if the assertions are true a ground of revocation exists, the examiner will raise the ground of revocation. The issue of whether the ground of objection will be maintained will depend on the response by the owner – and in particular whether the owner raises any credible elements of doubt about the assertions of the prior use. Where there is a credible element of doubt, the benefit of that doubt must be given to the owner – noting that the issue can be properly dealt with under a s.67(3) hearing.


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D07 Prior Art Base

D07.3 Published in a document within or outside Australia

D07.3.1 Document

Document is defined by section 25 of the Acts Interpretation Act 1901 as including:

document includes:

a. any paper or other material on which there is writing;

b. any paper or other material on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and

c. any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device.

‘Writing’ which is used in this definition is defined as:

writing includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form.

Thus besides the traditional concept of documents being on paper, documents also include things like tape recordings, CD's, DVD’s, floppy disks, computer data-banks, and photographs.

It is therefore clear that the prior art base includes information relating to designs which has been published in any of:

• in printed publications including magazines, newspapers, trade journals, catalogues;

• on the internet including on manufacturing websites, in advertisements, in articles;

• on the Designs or Design Patent Databases of overseas IP Offices; and

• electronically such as emailed newsletters.

D07.3.1.1 Trade marks and patents as citations

A Trade Mark may form the basis of a citation in two ways:

• a trade mark that is characterised by the visual features of pattern or ornamentation (such as a label, flag, napkin) might provide anticipation of a particular product bearing visual features the same as, or similar to, the trade mark. At issue will be the extent to which features indicated in the trade mark are part of the design, and the extent to which the product is disclosed (explicitly or inherently) with the trade mark.

• A shape trade mark inherently discloses a product of some type having 3-dimensional features of shape and/or configuration, and possibly pattern and/or ornamentation.


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Similarly a patent specification, to the extent that it discloses a design, is part of the prior art base by reason of s.15(2)(b).

It may be observed that the question of whether a product bearing the trade mark, or in accordance with the patent has actually been made is only relevant to s.15(2)(a); the trade mark per se, and the disclosure of a patent specification, is part of the prior art base by way of s.15(2)(b). In all instances, the question to be asked is – what is the design (if any) that is disclosed in the citation.

D07.3.2 Published

The criterion of ‘published’ relates to public availability. It is not limited to the process of producing multiple copies (such as the printing of a magazine).

A design is published in a document if:

• the document is one that a member of the public can inspect "as of right"; or

• a person not bound by express or implied confidentiality has knowledge of the content of the document.

For the first of these, it is not necessary to establish that any person has actually inspected the document before the priority date. It is sufficient to show that they could have inspected it. Similarly it is not necessary to show that the document could have been easily retrieved – such as by being correctly indexed in a library catalogue. It is sufficient to show that a person could have inspected the document – even if only by browsing.

A document is publicly available so long as it is publicly available somewhere in the world before the priority date. In particular, this means that examiners can take the publication date of a design or design patent in the database of another IP office as the date of it being published for the purpose of s.15 of the Act.

Note: For designs published by a foreign office, the dates of publication by that office are given under INID codes 43 to 46. It can be assumed that the design was publicly available on the earliest of those dates.

D07.3.3 Within or Outside Australia

The Designs Act expressly includes publications anywhere in the world as part of the prior art base. The date of publication is the date of public availability – and for this purpose the public is anyone anywhere in the world. There is no requirement that the document be published in Australia before the priority date, nor that it be published to an Australian citizen before the priority date.

D07.3.4 Establishing publication date

For a document to be part of the prior art base, it is necessary to establish the date of publication preceded the priority date. The following principles apply:


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D07 Prior Art Base

• The key issue is to establish that publication occurred before the priority date. Documents published many years before the priority date may require little evidence of their actual date of publication, since the mere fact of their existence and their self-evident age may be sufficient in themselves. On the other hand, a publication occurring a few months before the priority date may require clear evidence of the actual date of publication to establish that it was in fact published before the priority date.

• For a publication by a Designs Office, the date of publication given by that Office on the publication [usually associated with one or more of INID codes 43 to 46] is prima facie evidence of the date of publication. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;

Note: It has been known for intellectual property offices to publish documents on a date different to that indicated on the publication. However this is an extremely rare occurrence, and would require evidence to establish that fact with regard to any particular document.

• Publications by reputable organisations may have a similar implied confidence in the accuracy of the date of publication on the document. That date might be controverted by the owner, but the owner would have the burden of showing that date was incorrect;

• Where a document gives a date of publication as a month, or a year, the date of publication is taken to be the last day of the month or year – unless there is contrary evidence of the actual date of publication.

• Where a document is located on the Internet, the usual rules of publication date apply. However there are significant evidentiary issues that arise from the nature of the internet. In particular, what is the basis for asserting that a page as viewed today is the same as before the priority date? There are many web sites where the nature of the publication is such that there is a very high presumption that the relevant page is unchanged. There are many more sites where no assumptions can be made. Note in particular there is absolutely no reason to assume that statements such as ‘page last updated on xxxx’ have any reliability whatsoever.

There are a number of public web sites where people can upload images. On such sites, a distinction must be made between the purported dates of the images, and the upload date. The purported date of the image depends on the date arbitrarily set in the camera by the user; additionally it can be easily edited with appropriate software. Examiners should treat such dates as having no presumption of validity. However the date the image was uploaded to the site has a reasonable presumption of validity – assuming the site is independent, and has no commercial interest in the relevant products.

In many instances, it may be possible to establish the state of the page at a historical date using sites such as the ‘wayback machine’ at www.archive.org that archive sites on a semi regular basis. However examiners need to be aware that while this facility will usually give a valid date, the level of certainty about any particular date is well less than 100%. This can be compounded if the WayBack machine displays the current web site as a result of the user’s computer not being properly configured with


5


respect to Javascript. These uncertainties in the WayBack machine require some caution. The WayBack machine has a sufficient presumption of validity to assert a publication date in the first instance. However the presumption of validity is not so great as to negate a plausible assertion that the date indicated is in error. Accordingly, where an owner responds with a credible reasoned explanation of their belief that the date was in error (for example, based on the owner’s general knowledge of the industry), the examiner will proceed on the basis that the date from the WayBack machine is not reliable. In contrast, where the owner responds along the line of ‘the date is unreliable because it is from the WayBack Machine. Prove the date’, the owner will not have displaced the presumption of validity that does exist in the WayBack machine information. Consequently the examiner will not have any basis to disregard the date provided by the WayBack machine – and will proceed on the basis that the date from the WayBack machine is correct.

Proceedings before the Registrar are not bound by the Rules of Evidence. The Registrar is entitled to have regard to any matter that is logically probative [See, for example, the judgement of Deane J. in Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666]. But should the matter be appealed, those proceedings will be governed by the Rules of Evidence. See E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 at para 125 et seq, for one example of how the Federal Court has treated the WayBack machine in the context of the Rules of Evidence.

Where an examiner is desirous of establishing the date of publication of a web page, they must not contact the owner of the site. Any response by the site owner would be at best of an evidentiary nature, and non-definitive absent allowing the design owner the opportunity to cross-examine the site owner. Further, if the site owner is a commercial competitor (which may be likely if it contains anticipatory material), there are serious questions about the reliability of any dates provided – especially if there is a commercial advantage in giving an early date.

Where a relevant document is found that was plausibly published before the priority date, but there is some doubt about that fact, the examiner will raise the relevant ground of revocation in the first instance. If the owner challenges the fact of publication before the priority date, several scenarios might apply:

• If the web site was owned by the design owner (or an affiliated company), the owner inherently possesses the relevant knowledge about when information was placed on their web site. Accordingly it is appropriate for the owner to provide a declaration setting out relevant facts, thereby providing a sound evidentiary basis to disregard the relevant document. Assertions that the Registrar should drop the objection merely because the Registrar cannot establish the relevant dates are of no weight in these circumstances – because the owner has the relevant knowledge.

It should be noted that the Registrar will not invoke regulation 11.28(a) to require the owner to provide the relevant evidence. Rather the relevant objection will be maintained until such time as the owner provides the necessary evidence. It should additionally be noted that (in the absence of explanation) refusal to


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D07 Prior Art Base

provide the relevant evidence may lead to the inference that the owner has no real basis to challenge the alleged publication date.

• If the web site was owned by a third party, but the date can be readily challenged because it shows images of products made by the owner that were only manufactured after a later date, the owner should provide a relevant declaration identifying the product and when it was first released – thereby providing a sound evidentiary basis to disregard the relevant document. [The presence of a declaration will also assist third parties subsequently assessing the validity of the Design.]

• If the web site was owned by a third party, and the owner has no ready means of establishing the date is incorrect (but believes it was published after the relevant priority date) they may make relevant assertions about the lack of evidence of the publication date. In this scenario the objection will usually not be maintained.

Note: This issue is purely an evidentiary issue, with the onus falling on the Registrar [or on the person requesting examination, in the context of a hearing under s.67(3)]. It should be noted that the ground of revocation of s.93(3)(d) – obtaining registration by fraud, false suggestion or misrepresentation – is likely limited to actions of the owner prior to Registration, and not during examination. However, where an objection is overcome merely on the basis of assertion, it is appropriate for the examiner to record in the file the fact that examination was concluded expressly on the basis of the assertion or representation made by the owner or their attorney.


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D07.4 Designs disclosed in applications

In addition to documents published before the priority date, the prior art base also includes design applications having an earlier priority date but published on or after the priority date of the application. This is a manifestation of a 400 year-old principle that only one monopoly right should be granted for a single innovation. This provision ensures that designs that have an earlier priority have precedence over later designs – even if the earlier design was not published before the priority date of the later design.

The precise requirements for an earlier design application being part of the prior art base [see s.15(2)(c)] are:

• the design is disclosed in a design application;

Note: the application must be in the Australian Designs Office. Applications made in other offices are not relevant – except insofar as they establish a priority date for an Australian application.

• the design has an earlier priority date than the designated design;

• the first time documents disclosing the design are made available for public inspection under section 60 is on or after the priority date of the designated design.

Particular points to note with this provision are:

• The earlier application is not part of the prior art base until such time as it is published – either following registration or s.57 publication (such that s.60 applies). Note that there is no requirement that the earlier design be registered.

• If examination of the latter application occurs before publication of the earlier application, no objection based on the earlier application can be raised. In particular:

• the requisite element that the earlier application be published has not been satisfied (so that there is no objection) and

• raising the objection would almost certainly be an effective publication of the earlier application in contravention of s.61.

Note: Because the file of the design being examined is open to public inspection, a file note referring to that earlier application will likely constitute an effective publication of that design – contrary to the intent of s.61. Consequently no file notes referring to unpublished potential citations are to be made.

• The objection does not distinguish on the basis of applicant or owner. That is, earlier applications by the owner can give rise to the ground of objection.

• The status of the earlier application (lapsed or not lapsed) is irrelevant. All that matters is whether it has been published.


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D07 Prior Art Base

• Where at the time of certification the earlier design application has not been published, a Certificate of Examination can proceed to issue. However if the earlier design is subsequently published the ground of revocation is enlivened. The fact that Certification has occurred does not avoid the ground of revocation.

• The requirement under s.15(2)(c) is merely that of disclosure of the design – not that it is the subject of the earlier design application.

• Where the earlier design application includes plural designs, the objection is dependant upon the publication of the particular design relevant to the later application.

• A lapsed unpublished application with a priority date earlier than the priority date of the registered design being examined is not part of the prior art base. However if that application is restored (following an extension of time under s.137) and subsequently published, it becomes part of the prior art base and citable against any design having a later priority date.

D07.4.1 Transitional issues

The prior art base of s.15(2)(c) requires the designs to have been ‘disclosed in a design application’ [s.15(2)(c)(i))].

The dictionary to the Act defines a design application as ‘an application filed under s.21’. The transitional provisions of the Act do not treat applications under the 1906 Act as applications under the 2003 Act; s.153 expressly provides that the

old Act continues to apply to an application made under the old Act before the commencing day as if the old Act had not been repealed, unless a conversion request is made under s.159 in respect of the application.

Accordingly, a design application filed under the 1906 Act is not a design application within the meaning of s.15(2)(c)(i)), and cannot not form part of the prior art base for the purposes of s.15(2)(c). [See Reckitt Benckiser (UK) Limited [2008] ADO 5, para 2].

However if an applicant of an old-Act design converted that application using the provisions of s.159, that converted application is taken to be an application under the 2003 Act – s.160(1), and can form part of the prior art base for the purposes of s.15(2)(c).

About 94 old Act design applications were converted into about 200 new Act design applications.


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D07.5 Exhibitions, Unauthorised disclosures

S. 17, together with regulation 2.01, exclude certain publications or use from the prior art base.

D07.5.1 Exhibitions

If a design has been published or used at certain exhibitions before the priority date, that publication or use must be disregarded. The conditions for this are set out in reg 2.01, and are as follows:

• The exhibition must be one of:

• an official or officially recognised exhibition within the meaning of Article 11 of the Paris Convention,

• an official or officially recognised exhibition within the meaning of Article 1 of the Convention relating to International Exhibitions. [These are the international EXPO exhibitions]; or

• an international exhibition recognised by the Registrar by a notice in the AOJD prior to the commencement of the exhibition.

• The design application must be filed within 6 months of the date when the design was first published or used at the exhibition.

Note: The Australian design application must be filed within the 6 month period. That is, if the owner files an application in a Convention country, they must nevertheless ensure the Australian application is filed within 6 months of the date of first publication or use of the design at the exhibition if they wish to rely on this exclusion.

• At the time of filing the design, a notice is also filed stating that the design has been exhibited, identifies the design and the exhibition, states the date of opening of the exhibition, and if the publication or use first occurred after the commencement of the exhibition, that date.

• S.137 may be available in appropriate circumstances to extend the time for providing the required information.

Article 11 of the Paris Convention provides:

"(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them."

Article 1 of the Convention Relating to International Exhibitions provides:


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D07 Prior Art Base

"(1) An exhibition is a display which, whatever its title, has as its principal purpose the education of the public: it may exhibit the means at man's disposal for meeting the needs of civilisation, or demonstrate the progress achieved in one or more branches of human endeavour, or show prospects for the future.

(2) An exhibition is international when more than one State is invited to take part in it."

The convention also provides, in article 6, for the registration of the exhibition.

Such exhibitions are organised on a Government-to-Government basis. The protection afforded to designers for the display of their designs is generally recognised internationally. The exhibition has to be international, which means that it must include the exhibition of goods coming from another country. Expo 88, which was held in Brisbane, is an example of an exhibition that was officially recognised under the corresponding provisions of the 1906 Act [see (1986) 56 AOJP 1022].

International exhibitions recognised by the Registrar are recognised by means of a notice published in the Official Journal of Designs before the beginning of the event. An exhibition may for example be officially recognised upon an application being made to the Registrar by the organizer of the exhibition. However, unlike the officially recognised international exhibitions, the protection afforded in Australia by the Registrar recognising the exhibition will not necessarily be recognised in other countries. As such, while the designer may be able to obtain a valid Australian design after exhibiting their design, exhibition of their design at the exhibition may invalidate a design in other countries. The approach of the Registrar to recognising such exhibitions will parallel that of the Commissioner of Patents – see the Official Notices section of the AOJP of 7 March 1996.

In order for the exclusion of s.17 to apply, the publication of the design must have occurred during the exhibition at which the design was shown or used. The publication does not need to occur at the exhibition so that, for example, an advertisement of the design in a newspaper would be considered an appropriate publication for the purposes of reg 2.01 so long as that publication was made during the recognised exhibition. However brochures disclosing the design and publicly distributed before the exhibition even though they may be in connection with the exhibition, would not fall within this requirement. [See Steel & Co Ltd's Application (1959) RPC 411.]

D07.5.1.1 Exhibitions – Official or Officially recognised

In Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 it was noted that clarity and certainty mandated that an ‘official exhibition’ is one organised by government, as otherwise it would be difficult to determine where ‘official’ ended and ‘officially recognised’ began. The full court also noted that the fact that the organising body had a ‘public officer’ is irrelevant to the question of whether an exhibition is an ‘official’ exhibition.


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The requirements of ‘officially recognised’ were set out in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869 as:

An exhibition will be "officially recognized" if it is recognized by the federal or state government or any local government authority. Two obvious indicia of governmental recognition are: (1) the provision of public funds to fund the exhibition, particularly if given upon terms and conditions; and (2) the open participation of one or more ranking government officials at the opening, closing, or other formal ceremony or proceeding of the exhibition. While there will be other indicia of government recognition, it is neither necessary nor possible to provide an exhaustive list.

[The full court on appeal did not dispute this characterisation.]

Note: The term ‘official or officially recognised international exhibition’ as used in s.47(1) of the Designs Act 1906 was considered in detail in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142. In resolving the inherent ambiguity in that phrase, the court relied on s.47(2) of that Act, which referred separately to ‘official exhibition’, and ‘officially recognised international exhibition’. However regulation 2.01 of the 2003 Act is worded quite differently; to the extent that the same phrase is used, the regulation is consistent with it only referring to international exhibitions. This change in the nature of exhibitions is consistent with the expansion of the prior art base to include publications anywhere in the world.

D07.5.1.2 Exhibitions – International

The exhibition must be international exhibition. That is, it must involve exhibitors from more than one country. The number of exhibitors from other countries as a proportion of all exhibitors is not relevant. Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 at para 54.

Special Leave to appeal this aspect of the Chiropedic Bedding v Radburg decision to the High Court was refused – Radburg Pty Ltd v Chiropedic Bedding Pty Ltd [2008] HCATrans 412 (5 December 2008)

It may be noted that a foreign exhibitor exhibiting foreign products will result in the exhibition being ‘international’. However the situation is not clear in the following situations:

• a foreign exhibitor exhibiting products made in Australia;

• an Australian exhibitor exhibiting products made outside of Australia based on their specifications

• an Australian exhibitor which is part of an international corporate group, with products of that group being exhibited.

However as long as there is at least one international exhibitor exhibiting foreign goods, the exhibition will qualify as an international exhibition.

D07.5.2 Unauthorised disclosures


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D07 Prior Art Base

If a design has been published without the consent of the owner, by a person who derived or obtained the design from the owner or a predecessor in title – providing the Australian application is made within 6 months of the publication.

No other conditions are set out for this situation. However the owner has the burden of showing that the earlier publication was indeed unauthorised. If this issue was to arise in examination proceedings, it would almost certainly require a hearing under s.67(3) or 68(1) to satisfactorily determine the issue.

In Allen Hardware Products v Tclip [2008] ADO 8, the parties were found to be joint owners of several designs, with an implication that subsequent applications filed by each of the parties may also be subject to the same finding. In reviewing the further conduct of the case the delegate noted that the designs of one party had been cited against the designs of the other party, and stated:

… there is a question of whether s.17(1)(b) operates in a way to exclude those designs from consideration against the {latter} designs…. S.17(1)(b) only applies with respect to applications filed within 6 months of the date of first publication or use (regulation 2.01(3)) … While a new application filed following a declaration under s.54 maintains the priority date of the earlier designs (s.55), it does not retain the filing date. Consequently any application now filed is out of time for the protection available under s.17(1)(b) – implying that the parties would need to rely on a s.54(2) declaration with respect to the earliest design that disclosed the design of the new application, and may not be able to pick and choose between the {party’s} designs.

Any design where the owner seeks protection under this mechanism is to be referred to the Deputy Registrar in the first instance, as the likelihood of an inter partes dispute is high.

D07.5.3 Disclosures to the Commonwealth, a State or a Territory

Disclosures to the Commonwealth, a State or a Territory are not part of the prior art base [s.17(2)]. This also extends to persons authorised by them to conduct an investigation of the Design. Thus, for example, disclosure to the Commonwealth for the purpose of obtaining funding is not part of the prior art base.

For a discussion of issues pertaining to the scope of this exclusion, see Stack v Brisbane City Council 32 IPR 69.

Noting that the Designs Office is an agency of the Commonwealth, this provision does not result in material appearing on the Register in relation to any earlier design being unavailable for the purpose of examination or assessment of later designs registered or sought to be registered by the same person. Section 17 is properly seen as an overlay on s 15. Section 17 is designed to do no more than to allow, for example, a defence contractor to provide sample material to the Department of Defence while still keeping the benefit of a design application. Icon Plastics Pty Ltd [2007] ADO 2.


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D07.6 Copyright overlap - s.19

D07.6.1 Introduction

In response to an objection of lack of newness or lack of distinctiveness, an owner may seek the exclusion of the relevant citation on the basis of s.18. The entitlement to rely on s.18 is very much a question of evidence, much of which cannot (in a practical sense) be challenged by the Registrar in ex parte examination proceedings. In that regard, the role of examination is to ensure that there is a prima facie credible claim to s.18 entitlement, and that the basis for that claim is adequately documented on the file.

In order for s.18 to apply, the design owner must (in a practical sense) be either the copyright owner, or have derived title in the design from the copyright owner, of the relevant artistic work. Accordingly the design owner is inherently in a position to know all relevant facts. As the effect of a s.18 entitlement is to render an otherwise invalid design valid, it is incumbent upon the owner to fully disclose all facts relevant to their claim to s.18 entitlement. Where an owner appears to be evasive in providing relevant material (noting that redaction of documents to exclude commercially sensitive information such as pricing and customer information would be acceptable) the examiner is entitled to conclude that they are not satisfied of the owner’s entitlement to rely on s.18 – and maintain a relevant objection of newness or distinctiveness.

There are two aspects to s.18 entitlement. Firstly, there is the issue of whether the basic conditions of s.18 have been met. Secondly, there is the issue of whether s.18 is not available because the artistic work has been applied industrially. Some of the issues are legally difficult, and the nature of the legal issues depends upon the detail of the s.18 claim to entitlement. D07.6.2 sets out the general approach to dealing with s.18 claims. D07.6.3 provides more specific information on certain legal issues.

D07.6.2 General Approach in examination

D07.6.2.1 The basic conditions for s.18.

In the consideration of a s.18 entitlement claim, the examiner must be able to ascertain the existence of

• the relevant artistic work,

• the owner of the copyright in that artistic work, and

• the devolution of title to apply for the design.

An artistic work is only relevant where the design is a ‘corresponding design’. That is, the design would constitute a reproduction of the artistic work. The fact of it being a reproduction should be self-evident. Where it is not (in particular, where the artistic work is apparently altered in some material manner in the design) the owner will need to provide convincing argument that the design is in fact a corresponding design. Importantly, the Act distinguishes between an artistic work and a


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D07 Prior Art Base

corresponding design. Where the artistic work is a model or an actual object, the drawings or plans which (when applied to any article or substance) would result in a reproduction of that artistic work are a “corresponding design” in relation to that work. On the other hand, if the relevant artistic work is a drawing or plan, a design registration in respect of those plans is a registration for those plans, not a “corresponding design”. For further discussion, see D07.6.3.3 below

Furthermore, the exclusion exists only in respect of ‘any use previously made of the artistic work’ [s.18(2) chapeau]. In this regard:

• The artistic work per se is not excluded – it is only uses of that artistic work that are excluded; and

• ‘use’ has a similar meaning to ‘used’ of s.15(2)(a). That is, it involves the application of the artistic work to products such that there is a product bearing relevant visual features.

In effect, this means that s.18 is only available when an artistic work is, or has been applied to an actual thing.

For further discussion, see D07.6.3.5.1 below

The Act provides (in effect) for three categories of ‘artistic work’:

• paintings, sculptures, drawings, engravings or photographs,

• buildings or models of buildings; and

• works of artistic craftsmanship.

Where the alleged artistic work is within the first two of these categories, there is no requirement for the artistic work to have any artistic quality whatsoever. However, and importantly, an artistic work arising as a ‘work of artistic craftsmanship’ must have been created with a primary intent of being artistic, and must involve craftsmanship. Accordingly, where the artistic work is not within one of the first two categories, the examiner must be satisfied that it was created with artistic intent and involved craftsmanship. This would usually require evidence from the creator of the artistic work. It must be noted that the presence of distinctive features of shape, form or finish is not sufficient to make a work artistic - there must have been intent to create an ‘artistic’ work as in the normal meaning of ‘artistic’. [See D07.6.3.2 below].

Having identified the artistic work, the examiner must be satisfied that the design was applied for by either the copyright owner, or a person having the consent of the copyright owner. This means that the alleged owner of the copyright needs to be identified, and the basis of any devolution of title to the design owner.

Most situations will entail some form of ‘self-publication’ by the design owner – in which case the design owner is clearly in a position to set out all relevant facts. The situation might also arise where a publication by a third-party is asserted to be an infringement of the owner’s copyright in a prior relevant artistic work. In such circumstances, the owner will need to establish the prior existence of a relevant artistic work bearing copyright from which they have derived entitlement to the design – and again the design owner is in a position to know all relevant facts [assuming entitlement to the provisions of s.18 exists].


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It must be remembered that the s.18 entitlement arises from the existence of an artistic work in which copyright subsists. This work needs to be clearly and unambiguously identified. In the absence of convincing evidence of both the fact and detail of an asserted prior existence of a relevant artistic work, assertions of s.18 entitlement by way of that prior relevant artistic work are to be rejected. In some situations considerable care needs to be exercised in properly identifying the artistic work. For example, if person A creates an object which is not a painting etc. or a building etc, and is not a ‘work of artistic craftsmanship’, it is not an artistic work and no copyright subsists in it as such. However if person B photographs that object, that photograph per se is copyright with the copyright belonging to B – so that (subject to any assignment issues) A is not able to invoke s.18 to exclude B’s photograph from being an anticipation.

D07.6.2.2 Exclusion from s.18: ‘applied industrially’

If the examiner is satisfied that the conditions of s.18(1) exist, the examiner must also be satisfied that there has been no previous use made of the artistic work by (or with the consent of) the copyright owner in the form of:

• sale;

• letting for hire; or

• exposing for sale or hire

of products to which the corresponding design had been applied industrially

Sale, and letting for hire, are simple questions of fact - typically not within the examiner’s knowledge.

Exposing for sale or hire includes placing the product on a shelf for sale in a shop, or advertising the product for sale (or hire) by any of the various available media for advertising. In particular, a manufacturer’s product catalogue published on the internet would fall within the scope of ‘exposing for sale or hire’.

The term ‘applied industrially’ has a natural meaning that is dependant upon the facts. For example, the manufacture under contract of a single large and expensive utilitarian item such as a silo [Locarno class 25-03] would prima facie entail being applied industrially, whereas making a dozen vases by hand might not. Given the uncertainty that may arise as to whether the production of ‘x’ objects constitutes ‘industrially applied’, the reference to the Copyright Act for the definition of ‘applied industrially’ has the effect of deeming the production of 50 or more items as being ‘applied industrially’ – irrespective of the circumstances in which those items were produced.

Indicators that a design has been industrially applied include:

• Any publication or offer for sale (irrespective of number) by an entity involved in industrial activity (such as manufacture), where the relevant product is consistent with the type of products exploited by that entity; and

• Goods bearing the artistic work, where the good is clearly subject to mass production - eg consumer goods generally, plastic-moulded goods


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D07 Prior Art Base

• Goods in retail catalogues – which imply the availability of the product at multiple store locations

Situations where there is clearly no evidence of ‘applied industrially’ include:

• The relevant publication is in a specialist catalogue (eg the catalogue of an art auctioneering house) with implications of uniqueness.

• The publication is in advertising material that does not present the product as being available for sale (eg a brochure for an art display, depicting items in the display).

Where the relevant design has been industrially applied, s.18 is not available to the owner. Where an owner wishes to assert that the design was in fact not ‘applied industrially’, it is incumbent on the owner to provide all relevant material to establish a credible case for the design not having been applied industrially. Some issues – such as the absence of any sales or advertisements for sale, might be dealt with by way of declaration. In the absence of a credible case, the examiner should maintain the position that the design has been applied industrially – as well as the consequential objection of newness or distinctiveness.

D07.6.2.3 Prior publication in a patent specification or design

A particular situation arises when the design application is filed after the publication of a corresponding patent application or design, and the owner asserts that they are the copyright owner of the artistic works published in the patent or design, and that the artistic work has not been industrially applied.

Where the artistic work is the drawings as embodied in the earlier patent or design, and the present design is substantially in respect of the same drawings, it cannot be said that the present design is in respect of a ‘corresponding design’. See Water Recreations v Fairmile 42 ALR 273, and D07.6.3.3.

Where the applicant asserts that the drawings in the earlier patent or design are merely representations of an artistic work, the applicant will need to provide full details about the relevant artistic work – sufficient to show:

• The existence of the artistic work;

• That the artistic work predated the drawings – such that the drawings have always been representations of the relevant artistic work;

• The full characterisation of that artistic work;

• The artistic work has not been applied industrially

It may be observed that:

• where the present design corresponds to the drawings in the earlier patent or design, but differs from the original artistic work, the drawings of the earlier patent or design would not be excluded from consideration by s.18.

• where an artistic work has been created as a thing, and subsequently a patent or design has been applied for, there is a rebuttable presumption that


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the artistic work has been applied industrially (given the nature of patent and design rights).

Given the legal complexities of this issue, all instances where the copyright exception is claimed in respect of a prior patent or design publication are to be referred to the Deputy Registrar of Designs,

D07.6.3 S.18 issues – more detailed discussion

D07.6.3.1 Conditions for s.18 to apply

In essence, s.18 provides that if a person owns the copyright in an artistic work, publication or use of that work does not invalidate a subsequent design application – subject to whether the artistic work has been applied industrially by the owner of the copyright (see D07.6.2.3). In effect, the copyright owner has the right throughout the copyright term to (i) stop others from copying the work – whether industrially or otherwise – and (ii) to industrially apply the artistic work and obtain Design protection.

There are three key requirements for s.18 to apply – there must be a relevant artistic work in which copyright subsists, a corresponding design application must be made, and that design application must be made “by, or with the consent of, the owner” of the copyright.

D07.6.3.2 Artistic work

S.18 only applies when copyright subsists in an artistic work and the owner applies for registration of a corresponding design. The Copyright Act defines an artistic work as:

artistic work means:

a. a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;

b. a building or a model of a building, whether the building or model is of artistic quality or not; or

c. a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b);

but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.

Paragraphs (a) and (b) are fairly straight-forward. In particular:

• Under (a), any painting, sculpture, drawing, engraving or photograph is an artistic work by definition. There is no requirement for artistic quality. Images on the Internet would fall within this ambit – except that the copyright will lie in the original image rather than that displayed on the Internet; and

• Under (b), buildings or models of buildings are similarly artistic works by definition, irrespective of artistic quality. Note that the Copyright Act defines a building as being ‘a structure of any kind’, and as a result a half-sized tennis court has been held to be a building [Half-Court Tennis v Seymour (1980) 53 LFR 240]. Buildings also include portable buildings such as a shed, a pre-


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D07 Prior Art Base

constructed swimming pool, a demountable building or similar portable building. [See s.77(5) of the Copyright Act, which excludes such structures from buildings for the purpose of s.77.]

Paragraph (c), relating to ‘works of artistic craftsmanship’ was discussed by the High Court in Burge v Swarbrick [2007] HCA 17, where it was stated:

83. It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to "a work of artistic craftsmanship" within the meaning of the Copyright Act as it stood after the 1989 Act. However, determining whether a work is "a work of artistic craftsmanship" does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work's artistic expression, in its form, is unconstrained by functional considerations. To decide the appeal it is sufficient to indicate the following.

84. The more substantial the requirements in a design brief to satisfy utilitarian considerations of the kind indicated with the design of the JS 9000, the less the scope for that encouragement of real or substantial artistic effort. It is that encouragement which underpins the favourable treatment by the 1989 Act of certain artistic works which are applied as industrial designs but without design registration. Questions of fact and degree inevitably arise.

Consequently, where the visual features of the design are largely dictated or constrained by the functional purpose of the product it is appropriate to proceed on the basis that the work is not one of artistic craftsmanship. For the work to qualify as a work of artistic craftsmanship, it will be necessary to show that the artistic expression in the work was largely unconstrained by functional considerations.

D07.6.3.3 Corresponding Design

The protection afforded by S.18 only extends to a ‘corresponding design’, which is defined in s.74 of the Copyright Act as:

1. In this Division: corresponding design, in relation to an artistic work, means visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.

2. For the purposes of subsection (1): embodied in, in relation to a product, includes woven into, impressed on or worked into the product.

That is, the protection is only afforded if the Design is a reproduction of the artistic work in the copyright sense. (See, for example, Norm Engineering v Digga Australia [2007] FCA 761.) Note that since the tests for reproduction under the Copyright Act, and Distinctiveness under the Designs Act, are different, in principle it is possible for a work not to be a reproduction of the artistic work (such that s.18 does not apply) yet fail for lack of distinctiveness over that artistic work.


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The nature of “corresponding design” was considered in Water Recreations v Fairmile (1982) 42 ALR 273:

Section 17 A (1) operates where:

(a) copyright subsists in an artistic work, and

(b) an application is made (with certain consent) for the registration of a corresponding design.

The section clearly distinguishes between an artistic work on the one hand and a design on the other. The two are not synonymous. As has been demonstrated above the term “artistic work” is defined to include a drawing which includes a diagram, map, chart or plan. In dealing with the question of copyright under Australian law in an artistic work composed by an American in America, Mr Seaman QC for the plaintiff said: “Coming back to reg 4(1) (of the International Protection Regulations), the Act applies to an artistic work made in the USA. Then I take your Honour, to reg 4 sub-reg (3), which applies to a US citizen resident as to an Australian citizen. Then one can go back to apply the Copyright Act to the work of Mr Larry Timms [sic]. I leave the regulations and go to familiar ground, I think now, the Copyright Act s 10, which carries the chain of events with which I think your Honour is well familiar, of artistic work equals drawing equals plan” (transcript, p 102).

There is no question in my mind that the artistic work (or more correctly artistic works) of which Mr Larry Timbes is said to be the author and in respect of which it is claimed he is the owner of the copyright under the Copyright Act 1968, is a series of drawings of waterslide flume components and it is those drawings which the plaintiff, with Mr Timbes’ consent, applied on 7 January 1981 to register under the Designs Act 1906–1973. Those several applications were not applications for the registration of a corresponding design of an artistic work, but were applications for registration of the artistic work itself.

Had the artistic work been a model of a flume component sculptured or otherwise crafted by Mr Timbes then drawings or plans which when applied to any article or substance which may result in a reproduction of the artistic work would be a “corresponding design” in relation to the artistic work (Copyright Act s 17 A (1)). I fail to see how s 17 A (1) can have any application in a case where the design for which registration is sought is in fact the artistic work. In this case Mr Timbes was the author of a design which had its manifestation in a drawing and the plaintiff sought registration for the “conception or suggestion as to shape, configuration, pattern or ornament” conveyed by that drawing. The plaintiff did not apply to register a corresponding design of an artistic work. In my opinion the plaintiff is unable to rely on s 17 A in answer to the defendants’ assertion that the designs were published in Australia before the applications for registration were lodged.

[emphasis added]

Importantly, a corresponding design cannot be the artistic work per se.

D07.6.3.4 Applied for - by, or with the consent of, the copyright owner


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D07 Prior Art Base

Where the copyright owner and the design applicant are different, the design applicant will need to show that the design application was made with the consent of the copyright owner. The consent must have been given (or implied) before the making of the design application.

Where a design comes into existence as a result of employment or contract, s.13(1)(b) gives the employer the statutory right to the design – without any assignment from the author of the design. In such circumstances, it is quite possible that the ownership of any copyright has remained with the author. Yet the employer has the right to apply for the Design. Accordingly it is possible that the person required to have given consent to the Design application will not have assigned any rights to the design.

D07.6.3.5 Limits on S.18 application

The benefit of s.18 is not available where there has been certain use of the artistic work, by or with the consent of the copyright owner.

D07.6.3.5.1 use previously made of the artistic work

S.18 only excludes from the assessment of newness and distinctiveness:

“… any use previously made of the artistic work”

Importantly, s.18 does not exclude the artistic work per se from assessment of newness and distinctiveness. Consequently where the artistic work is a thing (eg a vase) as distinct from a pattern, s.18 does not apply to exclude the ‘thing’ from assessment of newness and distinctiveness of a subsequent design for that thing.

Furthermore, the exclusion is limited to ‘use’ of the artistic work. The word ‘use’ has a similar meaning to ‘used’ of s.15(2)(a); it involves the application of the artistic work to products such that there is a product bearing relevant visual features. [Note that this also provides the environment for the consideration of ‘applied industrially’ in s.18(2)(a).]

Consequently s.18 only excludes from consideration products upon which the artistic work has been applied. It does not exclude the artistic work per se, nor simple reproductions of that artistic work.

D07.6.3.5.2 Acts which negate s.18

The acts which potentially exclude the operation of s.18 are:

• Sale;

• Letting for hire;

• Exposing for sale or hire

of products to which the design has been applied industrially.

Acts which do not fall within these categories cannot be used to exclude the operation of s.18. For example, mere publication of the relevant drawings in a corresponding patent specification filed by the copyright owner does not fall within


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the above acts – and therefore cannot be cited against the corresponding design, even if the design application is filed years after publication of the patent specification.

D07.6.3.5.3 Applied Industrially

A key issue is whether the design has been ‘applied industrially’. Section 18 defines applied industrially by reference to the regulations under the Copyright Act 1968 – with regulation 17 being the relevant regulation. Regulation 17 is expressed as:

… a design is taken to be applied industrially if….

That is, regulation 17 is a provision that deems certain activities as constituting ‘applied industrially’ irrespective of any other assessment of whether the activity involved industrial application. Importantly, regulation 17 does not purport to provide an exhaustive definition of applied industrially. Consequently, while it may be taken that any design that has been applied to more than 50 articles is (by deeming) industrially applied, application of the design to fewer articles (including only one) may constitute industrial application – depending upon the surrounding facts. For example, designs for a service station or a silo (see Class 25-03) would likely be industrially applied if merely one such service station or silo was built for a customer.

See Ricketson para 67,265. Note also Safe Sport v Puma 4 IPR 120.

Indicators that a design has been industrially applied include:

• Any publication or offer for sale by an entity involved in industrial exploitation, where the relevant product is consistent with the type of products exploited by that entity; and

• goods bearing the artistic work, where the good is clearly subject to mass production - eg consumer goods generally, plastic-moulded goods

D07.6.3.5.4 Previous use with consent – acquiescence

Generally speaking, use of an artistic work by a third party without the consent of the copyright owner cannot be used to invalidate a subsequently filed corresponding design.

It should be noted that where:

• a third party has made previous relevant use of the artistic work; and

• the copyright owner knew, or ought reasonably to have known, that such use was occurring; and

• the copyright owner took no action to stop that use, or to stop that use continuing

there may be an estopped in pais that prevents the owner from bringing any action for infringement. [See, for example, Grundt v Great Boulder Pty Gold Mines Ltd [1937] 59 CLR 641 at 674]. That is, if a copyright owner allows a competitor to develop a market for a product before applying for Design protection, they may


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D07 Prior Art Base

nevertheless be able to subsequently obtain a valid Design. But they will likely have difficulty in enforcing it.


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Chapter 8

Table Of Contents D08 Searching ...................................................................................................................... 1

D08 Searching ...................................................................................................................... 1

iii

D08 Searching

D08 Searching

The most important task in the examination of a design is the assessment of newness and distinctiveness. While the current Designs Act does not mandate a search, the examiner must necessarily place him- or herself in a position to be able to assess the newness and distinctiveness of a design. To achieve this, the examiner will need to form an appreciation of the state of development of the prior art base for the design [s.19 (2)(a)] noting that the assessment is made by applying the standard of the informed user [s.19(4)]. In practical terms an examiner cannot be expected to access every document of the prior art base as this task would be extremely expensive and time consuming (assuming it is possible!). For this reason, documents provided by the person requesting examination [pursuant to s.64(2)], and documents provided pursuant to s.69 will also be considered during examination.


1



1

Chapter 9 - Assessing Newness and Distinctiveness



3

Table Of Contents D09 Assessing Newness and Distinctiveness ....................................................................... 5

D09.1 Overview .................................................................................................................... 5

D09.1.1 Subject-matter issues .......................................................................................... 5

D09.2 Test for Newness ........................................................................................................ 6

D09.3 Test for Distinctiveness ............................................................................................... 7

D09.3.1 The presence of extra visual features in citations ................................................ 9

D09.3.2 Inferring the impression – hidden perspectives ................................................. 10

D09.4 The s.19 requirements .............................................................................................. 13

D09.4.1 Similarities and differences ............................................................................... 13

D09.4.2 State of development of the prior art base for the design .................................. 14

D09.4.3 Statements of newness and distinctiveness ....................................................... 15

D09.4.3.1 Ambit statements of newness and distinctiveness ....................................... 17

D09.4.3.2 No statement of newness and distinctiveness .............................................. 17

D09.4.4 Amount, quality and importance ......................................................................... 18

D09.4.5 Freedom of the creator of the design to innovate .............................................. 18

D09.4.5.1 Background ................................................................................................ 18

D09.4.5.2 External factors ........................................................................................... 19

D09.4.5.3 ‘Particularly new’ designs ............................................................................ 21

D09.4.6 Informed User .................................................................................................... 22

D09.4.6.1 Historical Background .................................................................................. 22

D09.4.6.2 Purpose of the ‘Standard of the Informed User’ .......................................... 22

D09.4.6.3 The Standard of the Informed User ............................................................. 23

D09.4.6.4 Assessing declaratory evidence to establish the standard of the informed user .............................................................................................................................. 28



5


D09.1 Overview

The validity of a design is fundamentally a question of whether the design is new, and distinctive. The examination of a design is limited to the question of whether it is a registrable design [that is, is new and distinctive], plus the matters referred to in regulation 5.02 [that is, the excluded subject matter specified in s.43 and regulation 4.06.]

The test of newness involves a very narrow test of identicality. Most objections to the validity of a design will be a lack of distinctiveness.

The ALRC report made several recommendations [30 to 40] concerning the basis for assessing distinctiveness, most of which were accepted by the Government and implemented in the test set out in s.19 of the Act.

The test for distinctiveness is an involved test that requires consideration of a number of competing elements. These are discussed in more detail below.

D09.1.1 Subject-matter issues

Examination under s.65 is strictly limited to the issues of newness and distinctiveness (together with the grounds of s.43.) Any subject matter issues should have been dealt with as part of the formalities test (see Microsoft Corporation [2008] ADO 2), and should not normally arise in examination. Despite this, it is possible for a design being examined to lack subject matter. Most likely this will occur if the ‘design’ is in respect of visual features in the absence of a product. (An example would be a font.)

The requirements of newness and distinctiveness (sections15 and 16) are properties of designs; they are not properties of alleged designs. In the event that the subject matter of a design under examination does not involve a product bearing visual features (see definition of design under s.5), it is incapable of satisfying the newness and distinctiveness requirements.

In such circumstances, the examiner will object that the design is inherently not new, and not distinctive, because it is not a design in accordance with the Act – and set out the reasons why it is not considered to be a design.

It might be that the owner will respond by asserting that the subject matter of the design can be classified in the Locarno classification, and therefore meets the requirements of the Act. However the ability to classify in Locarno does not constitute a test for whether the design involves a product bearing visual features. See Microsoft Corporation [2008] ADO 2 at para 15.



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S.16(1) specifies the test of newness as:

A design is new unless it is identical to a design that forms part of the prior art base for the design.

The following points are relevant:

• The newness test requires a consideration of all features of the design. That is, a comparison of both the product considered as ‘things’ (irrespective of the label used to identify it), and the visual features of the product.

• The comparison is to be made against a single design. (LED Technologies v Elecspess [2008] FCA 1941 at para 12).

• The newness test relates to the appearance of the design, not the overall impression. Consequently the presence of a visual feature that is not present in the citation is sufficient to establish newness of the design – even though that feature may have no effect on the overall impression created by the design.

• The ‘informed user’ concept has no role to play in assessing newness. The test is one of strict identicality.

• The comparison is of the product as a thing, irrespective of use or purpose. For example if a ‘thing’ used as a milk crate is identical to a ‘thing’ that is a motor cycle carrier rack (see example in D04.3.1), it is the same thing and lacks newness.

Imagine a manufacturing process creating a thing, with each alternate item being sent to person A for a particular use, and the other items being sent to person B for a different use (with no changes being made to the thing). The fact that A and B are using the thing for a different purpose does not make the thing different – it is necessarily the same thing, irrespective of use.

As a practical matter, the objection of newness is likely to arise only by way of self-publication, or by direct copying. Note that the issues of freedom of the creator to innovate, the standard of the informed user, and the statement of newness and distinctiveness, have no role to play when assessing newness.

ALRC recommendation 32 was: “There should continue to be a requirement for registrable designs to be new but this should only be a filter for identical designs. A two-step filter of novelty and distinctiveness should be adopted to assess the eligibility of a design for registration.” This recommendation was accepted.



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The test for distinctiveness is specified in s.16 (2) as:

A design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design.

The ALRC made several recommendations about how this test should be applied, which are set out in s.19 of the Act. However before considering the issues of s.19, the basic nature of the test must be understood, including the individual components of the phrase ‘substantially similar in overall impression’:

Impression

The Macquarie Dictionary defines ‘impression’ (in the context as used in the Act) as:

1. a strong effect produced on the intellect, feelings or conscience

2. the first and immediate effect upon the mind in outward and inward perception

3. the effect produced by an agency or influence

4. a notion, remembrance or belief, often one that is vague or indistinct

From these it may be concluded that the use of ‘impression’ in s.16(2) and s.19 entails an assessment of the appearance of a product that does not involve an analysis of the small details of its appearance.

In recommending the use of the word ‘impression’, the ALRC report notes that the word has been used in designs law already, and notes that ‘first impressions’ are important in determining whether there is infringement of a design, citing Wanem v Tekiela (1990) 19 IPR 435 at 440, summarising the decision in Dart v Decor [1989] AIPC 90-569.

However, and as discussed below, the assessment is made on the basis of the standard of the informed user (S.19(4)). This necessarily means that the relevant impression is that gained by an informed user – and not that gained by an uninformed casual glance of the product. In that regard, the informed user may often have particular interests in certain aspects of a product, such that their attention is preferentially directed to those aspects. That is, the impression gained will necessarily depend upon the relative significance the informed user places on the various features.

Overall Impression

The reference to overall impression requires consideration of the product as a whole, and not just that part of the product bearing the particular visual features of the design. For example, a change of detail in a small innocuous visual feature on a large product might have no effect on the overall appearance of the design.

This was an important recommendation of the ALRC report, and was accepted by the Government with the comment ’the Courts… should assess appearance from the perspective of the whole appearance of the competing designs.’ This is also reflected in the dictionary definition of Design {means the overall appearance of the product…}.



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Similar

The test of ‘impression’ recognises that differences in detail can exist if they do not affect the overall impression. However the use of ‘similar’ indicates that strict identity of impression is not required – similarity of impression is sufficient.

Substantially similar

However mere similarity is not sufficient – there must be substantial similarity. That is, there must be ample commonality in the overall impression, without them necessarily being identical.

Accordingly it may be seen (subject to the various conditions set out in s.19) that the test of ‘substantially similar in overall impression’ has a focus on the overall appearance of the product without focussing on small details. Importantly, while the impression may be different, the degree of difference cannot be large.

Mosaicing impermissible

The comparison to determine distinctiveness is against individual items of prior art. It is impermissible to combine items of prior art to conclude that the design is not distinctive. As was said in LED Technologies v Elecspess [2008] FCA 1941 at para 12:

… a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new and distinctive.

Environmental considerations

When assessing whether a design is distinctive, the significance of visual features might depend upon whether the product is viewed in its environment of normal use, or in a sales environment. For example, in Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, the design related to street lanterns which were typically located about 8 – 10 metres above a road. The evidence showed that the lanterns were assessed and sold using physical specimens present on a table, with lighting engineers being present. However the court determined that the informed user was ‘a regular member of an urban development team who is primarily interested in the appearance of street furniture….’, and concluded (para 52):

…in my judgement this process of customer persuasion as a result of close inspection is not the proper situs for the relevant comparison to be made by the “informed user”. In addition to a table inspection, the informed user must have in his mind’s eye the visual impact of the lantern in situ – during the daytime moreover and from a little distance from the base of the pole upon which the ensemble is suspended. After all, these products must not only work reliably and be convenient to service, but most importantly, they must have outdoor eye appeal. When that comparison is made, details which are quite visible on the borough surveyors table (or whatever) may become less so in situ.

That is, while a comparison of products at close range outside of their environment of use may identify similarities and differences, the significance of those features must be assessed in the environment relevant to the informed user. For example, in the case of the street light where the design related to the overall external appearance of the lamp, the relevant informed user was concerned about the appearance of the lamp in the street-scape – and the appropriate viewing distance was from ground level. However for a component part of



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such a lamp (for example, the light socket within the lamp) the informed user might be the lighting engineer, with the relevant viewing distance being the close-up view one would have when maintaining a lamp.

D09.3.1 The presence of extra visual features in citations

The interpretation of ‘extra’ visual features shown in the representations of a design is discussed in D04 – see D04.1.

As discussed in para D04.4 a design, in relation to a product, means the overall appearance of the product resulting from one or more visual features. However, products might typically have features in addition to those represented in a design. For example, if a design is represented by way of a black & white line drawing, an actual product will inevitably have colour – which is a visual feature. Similarly a product might have additional visual features – for example, for a design based on the shape of a bottle, the bottle as sold will typically bear a label that provides visual features in addition to those shown in the representations of the bottle.

Note that the application of colour can, in the right circumstances, give rise to a new design.

These situations were discussed in Reckitt Benckiser Inc [2008] ADO 1, and Reckitt Benckiser (UK) Ltd [2008] ADO 6.

The designs in Reckitt Benckiser Inc [2008] ADO 1 related to containers bearing a label having a clear central circular area clear of any markings, with radiating bands extending to near the edge of the label area. The prior art designs showed containers of the same type and colour, and the same pattern on the label. However the label as shown in the citations contained additional textual material in large prominent lettering. The owner argued (in part) that the designs were distinctive because they did not contain the lettering that was present in the citations.

After reviewing the definition of a design, and noting that the dictionary definition:

invokes a causative relationship between the appearance and visual features. Significantly, that causative relationship is not tied to ‘the visual features of the product’, but to ‘one or more’ visual features of the product. That is, as a general proposition a design is constituted by some only of all visual features present in the product.

The delegate concluded:

In my view the scope of the design is properly ascertained by considering the causative relationship between ‘one or more visual features’ and the overall appearance of the product. Where the visual features of the design are present in a citation, I think the question to be asked is the effect of those visual features on the overall appearance of the product in the citation. If the features of the design are clearly evident in the overall appearance of that product, the presence of other visual features in the citation does not detract from the fact that the design exists in the citation.



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The design in Reckitt Benckiser (UK) Ltd [2008] ADO 6.related to a pharmaceutical tablet of a certain shape and colouration. The citations were identified as ecstasy tablets. One of the citations bore an impression of a duck on one face of the tablet – which was not present in the design. The delegate followed the reasoning in Reckitt Benckiser Inc [2008] ADO 1, and stated:

In my view, this situation {of Reckitt Benckiser Inc [2008] ADO 1} applies in the present case. All the features of the present design are admittedly present in this citation. Furthermore, an informed user would have awareness that pharmaceutical tablets frequently contain indentations on one or both faces – such as a line for cutting a tablet in half, dosage indications, or the range of markings that are apparently present on tablets like the cited ecstasy tablets. Consequently, in the absence of anything in the present design to indicate that the design is to the exclusion of, or incompatible with the presence of, additional visual features on the face of the tablet (in particular, indentations), the informed user would readily conclude that the present design is present in the tablet of the citation – and therefore is not distinctive over that citation.

Colour (as a visual feature) was also deliberated in Review 2 v Redberry Enterprises [2008] FCR 1588. This decision considered a clothing registration owned by ‘Review 2’ and a claim that ‘Redberry’ had infringed the registration with their own clothing design. An important consideration was that the representations of the (clothing) design, submitted by ‘Review 2’ in the application, were in colour.

When discussing the significance of colour as a visual feature, Kenny J indicated that:

[The] weight… to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate."

The relevant art supported a claim that an informed user would consider colour as a significant visual design element. This was an important factor in the case. Taking into account the colour representations submitted by ‘Review 2’, deemed to be an important design component due to being submitted in this fashion, Kenny J found that the ‘Redberry’ did not infringe their rights due to in part the colour differences between the clothing designs.

D09.3.2 Inferring the impression – hidden perspectives

It will frequently be the case that a citation does not expressly display the cited product from all perspectives. This can lead to a situation where the present design is substantially similar in overall impression having regard to all available views of the citation – leaving open the question of whether it would be substantially similar if regard was had to the hidden view of the citation.

This situation arose in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114. In that case, the citation was a document that showed the product in front perspective view only. However the Judge was prepared to infer the impression that would be gained from viewing the side of the product not expressly shown in the citation.



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When it is necessary to infer the impression resulting from hidden perspectives, the considerations include:

• the expected or actual symmetry of the product;

• the constraints on the appearance of the ‘hidden’ side imposed by the available views of the product;

• the appearance that would otherwise be expected of such products;

• the nature of the features expected to be present on the ‘hidden’ side – there is no basis to infer the existence of an ‘unusual’ visual feature on the ‘hidden’ side of a product.

The relevant paragraphs from the World of Technologies v Tempo decision is: 60 The respondent relies first upon the publication, at the Canton Fair in April 2005, of a brochure depicting the appearance of the MC-801 vacuum cleaner, for the purposes of s 15(2)(b) of the Designs Act. The original of that brochure is before the court. I have compared the brochure with the design as registered. It is common ground that the vacuum cleaner shown in each document is one and the same product. The copy of the registered design which is before the court is a photocopy. The representations of the vacuum cleaner in it are less distinct than the corresponding printed colour photographs appearing on the Suzhou Fak brochure of April 2005. Further, in the design as registered the product is shown in side view (both sides), in bottom view, in top view, in back view, in front view, in back perspective view and in front perspective view. As represented on the brochure, the product is shown only in front perspective view. For that reason, I am unable to conclude that the design is identical to that shown in the brochure. Accordingly, I do not hold that the design is not new for the purposes of s 16(1) of the Designs Act. 61 However, I consider that the design as applied for and subsequently registered is substantially similar in overall impression to the design disclosed in the Suzhou Fak brochure of April 2005. Although shown on the brochure in front perspective view only, the impression obtained from that angle permits the viewer to make a reasonable assessment not only of the side, but also of the front, of the vacuum cleaner. Assuming, as I do, that the product is symmetrical, I take it that the other front perspective view would convey the same impression. Further, the item is displayed on the brochure in such a way as to permit the viewer to gain a reasonably good impression of the appearance of the product from the top. The only faces of the product which it is impossible to perceive from the brochure are those of the rear and of the underside. Notwithstanding these omissions, I consider that the vacuum cleaner is sufficiently represented on the Suzhou Fak brochure to give a good impression of the appearance of the design of the product as a whole, as required by s 19(3) of the Designs Act. Taking that approach, I find that the design for which the applicant applied for, and subsequently secured, registration is substantially similar in overall impression to that which appeared on the printed brochure for the MC-801 vacuum cleaner distributed at the Canton Fair in April 2005. The latter was a design published in a document outside Australia and was, accordingly, part of the prior art base for the purposes of registrability.

More recently this issue was considered in Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.

In this case the cited art did not include representations showing all angles of the product bearing the design. As such, the overall impression was inferred during examination, taking



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into account hidden perspectives. It was argued that it was not appropriate to infer the overall impression, as the particular circumstances of this case differed from the ‘Tempo’ criteria set out in World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd [2007] FCA 114 and reproduced in the four dot points above.

The decision however makes the point that the ‘Tempo’ criteria should not be considered a definitive set of prerequisites (to consider hidden perspectives). What also should be taken into account is whether a reasonable assessment of the hidden views can be made utilising the angle(s) supplied as part of the representation(s).



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S.19 provides express guidance on the application of the test for distinctiveness. It may be noted that S.19 provides a range of potentially contrary issues. Ultimately the task of the decision maker is to have regard to all the issues set out in s.19 and assess the overall effect on whether the competing designs are substantially similar in overall impression.

S.19 sets out the requirements for distinctiveness as considerations required of the person making the decision. S.19(5) makes it clear that those considerations apply equally to a court.

The test for distinctiveness is applicable to situations where the visual appearance of a design differs from the prior art. That is, to be distinctive a design must be more than merely distinguishable from the prior art.

D09.4.1 Similarities and differences

S19(1) requires the person making the decision to ‘give more weight to similarities between the designs than to differences between them.’

This is a direct reflection of recommendation 37 of the ALRC, which states “The new designs legislation should give guidance to the courts in assessing distinctiveness. It should be specified that common elements are to be given more weight than differences.” The Government accepted this recommendation, noting that ‘The government also agrees appropriate legislative change will encourage the courts to give more weight to the common elements between competing designs.”

It must be observed that this involves a subjective consideration. It is not assessed in some mathematical way – such as by counting the features that are similar, and those which are different. It does not elevate similarities to being determinative of distinctiveness. Nor does it preclude a single difference being sufficient to establish distinctiveness. Rather the decision maker must make a judgement decision having regard to all features present in the design, according greater weight to those features in common.

For example, a product might have many features in common with a competing design, with one feature that is different. If an informed user considered all those features to be of equal significance, and the one feature of difference to be not particularly noteworthy to the overall impression, weighting the similarities greater than the differences would lead to a conclusion that the designs were substantially similar in overall impression. On the other hand, if the informed user considered the feature where the difference occurred was a particularly important feature in forming the overall impression, that feature would thereby have an increased weighting which may outweigh the combined weighting of all the features in common. See, for example, Icon Plastics Pty Ltd [2007] ADO 2, and Astra Zeneca AB [2007] ADO 4 and Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1.



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Ultimately the test is whether the design is substantially similar in overall impression. This requirement precludes a finding of distinctiveness merely by identifying differences from the prior art. Submissions that merely point out differences in detail are generally not persuasive; they must additionally establish that the relevant features materially affect the overall impression. Similarly arguments to the effect that the majority of features in a design are identical to the citation are generally not persuasive if the features that are different have a significant impact on the overall impression. [See, for example, Astra Zeneca AB [2007] ADO 4, where a relatively small visual feature was assessed as having significant prominence to an informed user; Sportservice Pty Ltd [2007] ADO 6, where a relatively small visual feature was found to have greater prominence in the actual product than was apparent from the representations and Manitowoc Foodservice Companies LLC. [2013] ADO 2 where the visual differences were considered minor and did not have the functional value or advantage that would cause an informed user to pay particular attention to them.]

There will be situations where the citation does not explicitly show all the visual features of a design. For example, the citation might show an image of a product from just one angle with the features on the ‘far side’ of the product not being visible. However the absence of visibility of the features on the far side does not preclude a finding of lack of distinctiveness. The question is – does the impression obtained from the particular viewing angle permit the viewer to make a reasonable assessment not only of the visible side, but also the other side. A factor relevant to whether such an assessment can be reasonably made is whether there is relevant symmetry in such products – such that the visible features can be said to fairly represent the hidden features. See World of Technologies v Tempo [2007] FCA 114 at para 61.

D09.4.2 State of development of the prior art base for the design

There are two aspects to this requirement.

a. If the prior art base is well developed, it may be expected that informed users will have a greater awareness of small differences between competing designs – whereas if the prior art base is poorly developed, differences will likely need to be large in order for them to be considered distinctive.

b. When assessing infringement, it is relevant to compare the extent of difference between the design and the alleged infringing product, and the design and the prior art. A finding of infringement is likely if the alleged infringing product differs from the design less than the design differs from the prior art.

It may be observed that (a) is similar in concept to that aspect of Freedom of the creator of the design to innovate discussed in D09.4.5, whereas (b) is of primary consideration in infringement proceedings.

In the context of examination: if the prior art base is well developed, this provision effectively requires the decision maker to have greater regard to smaller differences between the designs than would otherwise have been the case. This essentially is what would be expected of an informed user when appraising the designs. However, this does not mean that the test of distinctiveness in the case of a well developed prior art base is reduced to ‘is there any difference in impression between the designs?’ The overall requirement of



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‘substantially similar in overall impression’ remains; differences that do not affect the overall impression (as assessed against the informed user standard) cannot give rise to distinctiveness under the guise of the state of development of the prior art.

The ALRC report has little to say on the issue of the state of development of the prior art base. In para 5.23 it states:

• ‘… The extent to which a design is substantially different will depend on the state of the development of the prior art. A more developed prior art base will mean smaller differences will be sufficient to result in a finding that there is no substantial similarity.’

In the context of infringement, para 6.30 of the ALRC report states:

• ‘In considering whether infringement has occurred, the court should consider whether the difference in novelty or distinctiveness between the registered design and any registered, published or previously known design is greater than the difference between the registered design and the alleged infringing design. The Act should state that, if the court finds this is the case, it should support a finding of infringement. This ‘rule of thumb test was recommended in the Lahore report.’

- and refers to Firmagroup v Byrne & Davidson [1987] HCA 37, (1987) 9 IPR 353 as the basis for this ‘rule of thumb’ test. In fact the test is not referred to in the High Court decision in that case; its basis is the minority judgement of Lockhart J in the Full Federal Court decision on that case [(1986) FCA 184 at para 13, (1986) 67 ALR 29 at 37]. The approach has been followed by Lockhart J in Dart v Décor (1989) 15 IPR 403 at 409.8, and by Cowdroy J in Caroma v Technicon [2008] FCA 1465 at para 31. However this aspect of the test is strictly limited to infringement proceedings and has no application in examination – as any citation being argued over necessarily reduces to being the “any registered, published or previously known design” that is the basis of this test.

D09.4.3 Statements of newness and distinctiveness

A statement of newness and distinctiveness is a statement in the ‘design application’ that identifies ‘particular visual features of the design as new and distinctive’. [s.19 (2)(b)]. It is noteworthy that while such a statement must be used when considering a design under s.19, the statement is not included on the Register. The register entry is limited to merely indicating the presence of a statement [Reg 9.01(d)]. Also noteworthy is that after registration, there is no mechanism available to amend a statement – see Reckitt Benckiser Inc [2008] ADO 1 at paras 9 to 20.

Where a Statement exists, the person assessing the question of substantial similarity in overall impression must have particular regard to the features mentioned in the statement. [s.19(2)(b)(i)]. If the features relate to only part of the design, particular regard must be had to that part of the design. However that must be done in the context of the design as a whole. [s.19(2)(b)(ii)].

It is important to understand that:



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• A statement does not detract from the need to assess distinctiveness of the design in the context of the overall impression of the product bearing the design. For example, if an informed user would have no awareness of a feature when assessing the appearance of a product, specifying that feature in a Statement does not result in the informed user being deemed to have awareness of that feature.

This is similar to the situation discussed in paras 19 and 20 of Apple Computer Inc [2007] ADO 5, in the context of freedom to innovate.

• Where the statement identifies particular visual features that apply to the whole of the design, the effect is to narrow the scope of the design. For example, if the statement indicated that the surface of the product was a particular colour the design right would be limited to products of that colour.

• Where the statement identifies features that relate to only part of the product, distinctiveness is assessed having particular regard to those features – albeit in the context of the design as a whole [s.19(2)(b)(ii)]. In this situation, the statement functions to distinguish between the visual features of the design, and features that are generic to the product. That is, such a statement may result in the design being of broader scope than might otherwise be the case.

For a full discussion about determining the nature of a design when there is a statement of newness and distinctiveness - see D04.6

Typically the representations of a design will indicate the product to which the design relates, will show the visual features that are specific to the design, and might indicate visual features that are generic to that product. As a general proposition, where there is a meaningful statement of newness and distinctiveness, distinctiveness will depend upon some or all of the features referred to in the statement. It follows that where the products of the design and the citation are the same (or substantially the same), distinctiveness cannot arise from a feature that is not referred to in the statement or that is otherwise indicated in the representations as being generic to the product.

Such situations may be overcome by an appropriate amendment to the representations or product name to elevate the significance of such a feature – providing the amendment complies with s.66(6). However it must be remembered that the statement cannot be amended [See D10.6]

For example – assume the design relates to a tea cup and handle, with the statement of newness and distinctiveness referring to the shape of the handle. [This is the ALRC example of a cup and handle, at para 4.14 and 6.21] If a citation was found showing that handle attached to a particular shaped tea cup, the fact that the representations show a somewhat differently shaped tea cup is largely irrelevant. Assessment of newness and distinctiveness is based on the appearance of the handle in the context of cups generally (having regard to the amount, quality and importance of the handle in the context of the cup as a whole), and the fact that the representations indicate a different shaped cup is only relevant if they demonstrate that a different product is involved.

In many situations the ‘visual features’ that give rise to the design are present on only part of the product. Nevertheless the design is the overall appearance of the product bearing the design. Where an applicant has included a statement of newness and distinctiveness, the assessment of newness and distinctiveness must have ‘particular regard’ to features



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specified in the statement – but nevertheless the design must be assessed in the context of the design as a whole. [s.19(2)(c)].

Note: A statement of newness and distinctiveness does not operate to convert an otherwise insignificant feature into a feature of prominence. The question is whether the informed user, when considering the product as a whole, would appreciate that the overall impression of the product is different.

D09.4.3.1 Ambit statements of newness and distinctiveness

Occasionally a statement of newness and distinctiveness will be non-specific, such as:

Each feature of the design considered separately or in combination with any other feature or features.

Such a statement was considered in Reckitt Benckiser Inc [2008] ADO 1. The delegate concluded that such a statement should be interpreted as a reference to the combination of all visual features of the design as shown in the representations. Note that such statements cannot be amended after registration – see D10.6.

The relevant paragraphs of that decision are:

43. The construction of this statement is problematic. It doesn’t identify any particular visual feature or features of the design. It merely refers to features, with an ambit claim of them being alone, or combined with one or more other features. Taking this at its simplest, I could opt to identify a visual feature as the shape of the basic container as shown in each of the present designs – in isolation from any other feature shown in the design – leading to the conclusion that all the present designs lack distinctiveness since the basic container is clearly shown in the anticipatory documents. And as the statement cannot be amended in any effective manner, this conclusion would inevitably lead to revocation of all designs.

44. However, I am not satisfied that this is the proper approach to take to such statements of newness and distinctiveness. I think that it is proper to recognize that with the implementation of the Designs Act 2003 the significance and use of the statement of newness and distinctiveness was not well understood by users. And this led to some users including statements like those of the present, supposedly to keep the owner’s options open. In the absence of identification of any specific visual feature in the statement, I think the preferable construction of such ambit statements is to interpret them in a manner such that the design is most likely to satisfy the requirement of being distinctive. That means interpreting the statement as being a reference to the combination of all visual features of the design as shown in the representations [which, arguably, means that the statement adds nothing to what is shown in the representations.]…

D09.4.3.2 No statement of newness and distinctiveness

A statement of newness and distinctiveness is not an essential component of a design. Where no statement has been filed, s.19(3) specifies that distinctiveness must be determined by having regard to the appearance of the design as a whole.



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However s.19(3) must be applied in the context of the representations of the Design. Where the representations show the product and its visual features without any form of discrimination, distinctiveness is to be determined by giving equal weight to all the visual features of the design. However where the representations indicate the relative significance of features – such as by the use of dotted lines, shading, and other drafting techniques – distinctiveness must be determined by giving due regard to the relative significance of the features as shown in the representations.

Recommendation 47 of the ALRC report would have required a statement of newness and distinctiveness as part of every design application. This recommendation was not accepted.

D09.4.4 Amount, quality and importance

S.19(2)(c) provides:

if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole.

This provision arises from the last dot point of recommendation 55 of the ALRC report, which stated:

• In determining infringement the court should consider:

• * when only a part or a portion of a registered design is substantially similar to the alleged infringing design, the amount, the quality. And importance of that part or portion in relation to the whole of the registered design

which was accepted by the Government.

While the origin of this provision is associated with infringement, the fact that the tests for infringement and validity are the same means that this criterion has relevance in examination.

In examination, if one or more visual features of the design are not present in the citation the examiner must consider the amount quality and importance of the visual features not present in the citation, to the design being examined. If those visual features are small in number and have little impact on the overall impression created by the design being examined, their absence from the citation does not establish distinctiveness.

D09.4.5 Freedom of the creator of the design to innovate

D09.4.5.1 Background

The basic rule for assessing newness and distinctiveness is to have regard to the overall impression of the design, giving more weight to the similarities than the differences. However



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the legislation expressly provides two modifications of this principle by way of the concept of ‘freedom of the creator of the design to innovate’. In broad terms, the two modifications are:

• Where the overall appearance is dictated by external factors over which the designer has no control, it is appropriate to assess newness and distinctiveness on the basis of factors which are under the designer’s control; and

• Where a design represents something particularly new, and is recognised as such by the public, a subsequent similar design will need to be significantly different to avoid a lack of distinctiveness.

The concept of ‘Freedom of the creator of the design to innovate’ derives from the 1991 EC Green Paper The Legal Protection of Industrial Designs. The relevant text is as follows: 5.5.8.3. The second provision endeavours to express a guide-line for the judge in order to cater for the extraordinary variety of cases that the design legislation is going to govern. The provision expresses the principle that, the more limited the freedom of the designer is in developing his design due to technical or marketing constraints (standardization, mechanical or physical constraints, necessity of taking into account deep-rooted marketing requirements by the clients, features imposed by fashion), the more weight has to be given to small differences or variations as constituting an independent development. The judge can expect the “relevant public” in this situation necessarily to give a more careful consideration to the details which make up the difference between two similar products. 5.5.8.4. On the other hand, where the freedom of the designer is unconstrained large and the design represents something substantially new and immediately perceived as such by the relevant public, designs representing quite a wide range of alterations or variations could be considered as infringing, because the strong personal character of the new design inevitably commands an overall impression of a substantial similarity, even if the differences are quite easily noticed.

D09.4.5.2 External factors

The basis of this consideration is that the newness and distinctiveness of a design should not be determined by features which must be present in order for the product to be marketable. Rather, in such circumstances it is appropriate to expect an informed user to assume the presence of those features and give greater consideration to the other features of the design.

Illustrative of situations where this can arise are

• Features which are inherently present in order for the product to exist as that product. For example, a ‘sewing needle’ is inherently a long thin object, and those features will dominate its appearance; as a result it is appropriate to have regard to smaller details of the needle to assess newness and distinctiveness. By way of contrast, there is no inherent shape for a ‘food container’ – and accordingly newness and distinctiveness are assessed by having regard to the overall appearance. See Bitzer Kuehlmaschinenbau GmbH [2015] ADO 1 where an important consideration was that the product (being a refrigeration compressor) needed to be interchangeable with existing models as a replacement part.



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• Features which are required to be present in order for the product to be lawfully sold or used. This particularly relates to requirements arising from government regulation – for example, Health and Safety regulations, building codes, and the like. Where the appearance of a product is dominated by features that are required for compliance with such regulation, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness.

• Features which are required as a result of industry standardisation. In many industries there can be standardisation of products. For example, the basic configurations of the cassettes for video and audio tape recorders are the subject of industry standardisation. Where the appearance of a product is dominated by features that are required as a result of standardisation in the relevant industry, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness.

• Features dictated by fashion. In some industries the marketability of products is strongly dependant upon fashion. That is, while a range of products might satisfy a technical requirement for a product, issues of fashion dictate the presence of certain features if the product is going to be marketable. Where the appearance of a product is dominated by features that are required as a result of fashion, it is appropriate to have regard to the smaller details when assessing newness and distinctiveness. When considering this issue, it must be remembered that fashion can be a very subjective issue, and can be very temporal. Also, the fashion expectations may be very dependant upon the particular group of people the product is aimed at. And fashion will often be changed as a result of new products coming on to the market. Accordingly care must be exercised with this particular concept to ensure that it is not devalued to merely being an excuse to imitate a competitor’s product. For the ‘fashion’ criterion to be established, it needs to be demonstrated that the fashion need is such that, without the presence of the relevant features, there would be very little user demand for the product as a result of them being ‘unfashionable’.

• Features which users ‘demand’ in such products. For some products their marketability may be very dependant on deep-rooted user expectations. That is, they will not buy a product unless it has a particular feature – irrespective of the real significance of that feature. Where the appearance of a product is dominated by features that are required because of user expectations, it is appropriate to have regard to the smaller details to assess newness and distinctiveness. Note that this situation only arises when the great majority of users expect the particular features to be present, and would be deterred from buying a product that did not have those features.

Importantly, the concept of freedom to innovate is associated with the need for designers to satisfy user requirements of the relevant product. The concept does not provide a lower threshold for distinctiveness merely on the basis of there being many similar competing products. For example, a particular product type might be available in many different designs – and it may be difficult to devise a design that is new and distinctive from the existing products. However this does not constitute a lack of freedom of the creator to design or



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innovate. Relevant lack of freedom only arises with respect to features that inherently must be present in order for the product to be sold or used.

The effect of the above considerations is to render a design valid in circumstances where otherwise it would fail for lack of newness or distinctiveness. Accordingly when an owner argues newness or distinctiveness on the basis of this issue, they bear the onus of demonstrating a credible basis for concluding the relevant circumstances apply. In many situations this may be relatively easy – in that the circumstance is largely self-evident (e.g. structural considerations). But where the issue involves subjective considerations (e.g. fashion issues, user demands) the owner will need to provide sufficient information for the examiner to be reasonably satisfied of the likelihood that the relevant circumstances apply.

Newness and distinctiveness must be assessed as at the priority date. This fact may be particularly important where a temporal element is involved in any of the above considerations. For example, when assessing whether a feature was dictated by fashion, the question is – what was the fashion requirement at the priority date, and not at the date of examination.

It should also be noted that these requirements are inherently assessed in the context of the Australian market. For example, the pin configuration of a household electric plug is different in Australia (& New Zealand) to the rest of the world – and consequently evidence from a person in another country about requirements for household electric plugs based on plugs in that country is likely to be of little value.

It may be noted that the approach to ‘the degree of freedom of the designer in developing the design’ as expressed in Art 10(2) of the European Community Design is consistent with the above. See Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8, at paragraphs 29 to 31. In particular:

31…I have no doubt that the “freedom of the designer” referred to is not that of a particular party – it is the degree of choice a designer would have in creating his design, not the particular constraints on a particular party. ….

Similarly in Eredu v Arrmet (OHIM ref: ICD010000024; Apr 27 2004) – referred to in the above case:

16. The degree of freedom of a designer is limited by the fact that stools of the type to which the CD relates necessarily comprise a base, a central column and a seat in order that the stool fulfils its function.

D09.4.5.3 ‘Particularly new’ designs

This component is recognition that when a fundamentally new product design comes onto the market, the uniqueness of the product/design results in users applying greater latitude when associating products with the design. Where the possibilities for variation are large, a competing product that has only small variations from the original design/product may reasonably be seen to be an imitation of the product. Consequently, when assessing newness and distinctiveness, it is appropriate and necessary to require a greater degree of differentiation than would otherwise be the case.



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The owner of a particularly new product/design may sometimes seek to maximise the protection of their design by filing similar designs differing only in small detail form the original design. However the owner is in no different a position to anyone else seeking design protection; a subsequent design differing by only small detail will fail for lack of newness or distinctiveness – irrespective of who is the owner of the subsequent design.

D09.4.6 Informed User

D09.4.6.1 Historical Background

Under the 1906 Act, assessment of registrability of a design was to be ‘judged by the eye’. During examination this was the eye of the examiner but if a registered design became the subject of legal proceedings, the "eye" was that of the court. The ALRC considered that this subjective test was not transparent and resulted in uncertainty regarding the likely outcome of infringement proceedings. They recommended that a more objective test be applied and that registrability should be assessed by the standard of an informed user. (Recommendation 34.)

D09.4.6.2 Purpose of the ‘Standard of the Informed User’

The concept of Informed User arises in the context of assessing substantial similarity in overall impression of a design under Section 19 of the Act. This requirement is both a factor in the registrability of the design [by way of s.16(2)] and infringement of a design [section 71(3)]. Consequently the determination of the ‘standard of the informed user’ is likely to be prominent – if not critical – in any debate about distinctiveness.

While the concept of the ‘standard of the informed user’ is defined expressly for the purposes of s.19, it in fact has broader application. For example, when assessing the allowability of an amendment there is always the question of – what is the standard to apply when assessing the disclosure of the design before amendment [s.66(6)(b)], and the effect of the amendment [s.66(6)(a)]? Since such amendments directly affect the s.19 considerations, consistency requires the standard of the informed user be the basis for assessing the allowability of amendments.

It is important to recognise that the ‘standard’ of the informed user describes the standard to be applied, and not who can give evidence. The ‘standard’ is best thought of as being associated with a hypothetical person who is representative of the class of all persons who are informed users – and not a particular real person. This issue is particularly important when assessing declaratory evidence provided to assist in identifying the standard of the informed user. Where the declarant is an aficionado of the particular product, the declarant is clearly an ‘informed user’ – but their views may not represent those of the typical informed user. Similarly a declarant may be able to demonstrate that they are an ‘informed user’, but their knowledge of the product is less than the typical informed user – in which case their views also may not represent the standard of the informed user.

As a practical matter, it may be observed that a design owner, faced with a citation, may naturally engage a declarant who will emphasise the significance of differences between the design and the citation. Conversely a third party may naturally seek to engage a declarant who will de-emphasise the differences between the design and the citation. [These



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approaches would be reversed if the design owner is trying to establish infringement, and the alleged infringer is trying to establish non-infringement.] When assessing the weight to accord a declaration, a relevant consideration is whether the views of the declarant are indicative of a typical ‘informed user’. That is, the examiner needs to consider the basis for accepting that any particular assertion relates to the ‘standard’ of the informed user, rather than the views of an aficionado or a ‘barely informed’ informed user.

It is important to note that the prior art base [s.15(2)] distinguishes between documentary publication (world-wide) and publication by use (limited to use in Australia). Similarly, use must occur within Australia for there to be infringement of a Design under s.71(d). The labelling of the person defined in s.19(4) as an ‘informed user’ inherently limits that person to knowledge within Australia. Consequently declaratory evidence relating to the ‘standard of the informed user’ must relate to familiarity in Australia. While there is no barrier to persons from other countries providing evidence regarding the ‘standard of the informed user’, that evidence may have little weight if it fails to relate the declarant’s experiences in their own country to familiarity in Australia.

For a product that is well used in another country, but has no market penetration in Australia, evidence from an expert from that foreign country is of little assistance. Where a product is well known in Australia, but has little market penetration outside of Australia, evidence from an expert from that foreign country is equally of little assistance. That is, familiarity with the particular product in the declarant’s home country is irrelevant – for both high and low familiarity. What matters is familiarity in Australia.

For a range of products there are fundamental differences in the product between Australia and other countries. For example, toilet bowls in Australia compared to North America; power outlet connections in Australia & New Zealand compared to the rest of the world. Clearly an expert from another country relating their experiences in that country in respect of such generic products is of little relevance.

However:

* evidence of what informed users (in Australia) are familiar with from other countries may be of relevance; and

* evidence from a foreign declarant may be relevant if it is related to what is familiar in Australia.

D09.4.6.3 The Standard of the Informed User

Subsection 19(4) defines the standard of the informed user as:

The standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates.

In construing this definition, the question of the degree of familiarity required by the standard arises. For this purpose it is appropriate to refer to the relevant ALRC recommendation (#46) and the Government response. [S.15AB Acts Interpretation Act.]



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The concept of informed user is intended to be flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. Importantly, it does not require that any one of these categories of people must be part of the test in all cases. Rather the person is someone who is reasonably familiar with the nature, appearance and use of the products of the relevant kind. A particular issue is the status of people located intermediate in the path from the product manufacturer to the ultimate end user. Where such a person is responsible for the ‘practical’ use of the product [such as a motor mechanic charged with replacing a worn-out part] they are the effective users of the product – not the car owner. In contrast, a person whose responsibility is to select items to be stocked for sale [such as a whole-sale buyer in a department store] is not a ‘user’ of the product. However their role in purchasing goods users will want to buy might lead them to be in a position to give evidence about the standard that would be applied by users.

In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 the relevant product was ladies garments. It was stated:

• In the present context, women as a class are the ordinary users of ladies’ garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged

An expert or specialist in designs per se is not necessarily an informed user. The ALRC report expressly states that distinctiveness should be determined by users of the design rather than design experts – and this is expressed by the standard of the ‘informed user’. An expert or specialist in designing products is not thereby an expert or specialist in the use of such products. Rather, the status of expert or specialist arises from knowledge of the use of the product (including similar products).

These principles were summarised in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at para 59 as:

Although it would be dangerous to attempt some comprehensive statement of principles that might be applied to the concept, it is apparent that an informed user:

1. is reasonably informed; not an expert but more informed than an average consumer;

2. is an objective standard. However, expert evidence may still be adduced in court to assist the Court in applying the informed user concept;

3. focuses on visual features and is not concerned with internal features or features that are not visible to the naked eye.

The person is not assumed to have any knowledge of the particular product or article to which the design is applied. Rather the standard is that of a hypothetical person familiar with products the same as, or similar to, those to which the design relates.



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The standard requires the person be familiar with the product to which the design relates. Thus what matters is the impression observed by a person familiar with the products. An impression that might be made by an impulse buyer, or someone who is unfamiliar with products to which the design relates, is not definitive of the standard. Similarly, the impression observed by an aficionado is also not definitive of the standard.

In Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, (cited with approval in Proctor & Gamble v Reckitt Benckiser (UK) [2008] FSR 8) the characteristic of an informed user (in the context of the European legislation) was described as follows:

• First, this notional person must obviously be a user of articles of the sort which is the subject of the registered design – and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of “the man in the street”. “Informed” to my mind adds the notion of familiarity with the relevant rather more than what one might expect of the average consumer; It imports the notion of “what’s about in the market?” and “what has been about in the recent past?” I do not think it requires an archival mind (or eye) or more than average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things. … Therefore the focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any).

It may be noted that this is consistent with the discussion of informed user in the ALRC report.

The identification of the informed user can have a major effect on the assessment of distinctiveness. For example, in Woodhouse UK v Architectural Lighting Systems [2006] RPC 1, the design related to street lanterns which were typically located about 8 – 10 meters above a road. The courts assessed the designs on the basis that the informed user was ‘a regular member of an urban development team who is primarily interested in the appearance of street furniture….’ – that is, with the appearance of the lamp as viewed from a distance. This meant that differences that were only apparent when viewed at close range (such as at the point of sale) were discounted because they were not visible in the operational environment relevant to the informed user.

Note: This illustrates the importance of the informed user when assessing the distinctiveness of a design. If the design related to the shape of a clip used to hold the cover of the street lamp in place, the informed user would most likely be a maintenance person viewing the lamp head from close range.

Note: Care is required when referring to UK or European decisions concerning the Informed User. In particular, while there may be significant commonality in what constitutes an ‘informed user’, the task required of the informed user is quite different. Under the European legislation, the relevant test is:



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• A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public…..

That is, ‘individual character’ arises if the overall impression is different from the prior art [note that the test is not ‘clearly different’ - see Proctor & Gamble v Reckitt Benckiser (UK) [2008] FSR 8, at para 35.]. That is, the test is focussed on differences. In contrast, the Australian legislation applies a test of ‘substantially similar in overall impression’ [s.16(2)] and requires the person making the decision to ‘give more weight to similarities between the designs than to differences between them’ [s.19(1)]. That is, the Australian legislation requires greater differentiation than that required by the European legislation.

Additionally, UK and European decisions differ from Australia legislation regarding the requirement that the informed user be a user of the product.

The Multisteps decision - Multisteps Pty Ltd v Source & Sell Pty Ltd [2013] FCA 743 supports the concept of the informed user being one familiar with the product bearing the design, and is consistent with s.19(4), ALRC report and subsequent Government response. This decision distinguishes itself from previous European and UK decisions when considering the standard of the informed user. The Multisteps decision does not follow European and UK approach which requires a user requirement for the informed user. Instead, the standard only requires sufficient familiarity of the product when assessing the type of person or persons who should be considered an informed user.

In the Multisteps decision, Justice Yates indicated that the standard of the informed user does not require the notional person or persons to be a user, although the appropriate consideration of familiarity can be gained through use. The user might be a range of different people who have gained familiarity to the product in different ways. His honour stated (at 70) that the “necessary and only qualification is that the person be familiar with produce or similar containers…[and] he or she will have an awareness and appreciation on the visual features of the produce container that serve its functional as well as aesthetic purposes”.

His Honour also indicated (at 67):

“Importantly, however, s 19(4) does not impose a standard higher than familiarity. The standard fixes the appropriate level of generality (or particularity) at which a design is to be assessed: see the discussion in Rolawn at [112]. This may be a reason for saying that the notional person is not a design expert, lest it be thought that a standard of design evaluation more rigorous or exacting than familiarity is involved. However, in my view, it is not a reason for excluding, necessarily, a design expert from being a person having the required familiarity” (emphasis added).

When the product is identified in association with a particular purpose or use (for example, a container for water) the relevant informed user would be a person familiar with that product and its asserted purpose or use. The extent which products used for different purposes or uses can be considered against distinctiveness depends on whether an informed user would consider such a product to be a similar product to the product to which the design relates. [s.19(4)]. [See also D04.3.1] The informed user standard does not determine whether a document is part of the prior art base, or can be considered for distinctiveness. Rather the informed user standard sets the standard to be applied when assessing whether a design is substantially similar in overall impression to another design. That is, it sets the environment for interpreting a design. In Reckitt Benckiser Inc [2008] ADO 1 the critical publication was



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an annual report of the owner published in England about a week prior to the priority date of the designs. The owner argued that the cited prior art should be excluded from consideration because an informed user (being a person in Australia) would not have been aware of the relevant publication before the priority date. In rejecting this submission the delegate stated (at paragraph 28):

… the informed user standard sets the standard to apply when comparing the design with an item of prior art. It requires the tests of s.19 to be applied from the perspective of an informed user – as distinct from someone who knows nothing about the relevant products, or from someone that is an aficionado of such products. In particular, the informed user standard is not a constraint on whether a particular item of the prior art can be considered – its role is limited to the standard to be applied when determining whether the design is distinctive having regard to a particular item of the prior art.

Conversely, while an informed user will undoubtedly have knowledge of a range of designs, the informed user standard does not entail any express inclusion of such other designs into the consideration of distinctiveness. In particular, an approach like:

the difference between the design and the citation is X. I know that X is commonly used in similar designs, and therefore the design is not substantially similar in overall impression having regard to the citation in combination with X.

is an invalid approach. The question is a more objective one of – having regard to my knowledge of the range of similar products and designs, is the present design substantially similar in overall impression to the cited design.

See also LED Technologies v Elecspess [2008] FCA 1941 at para 12, where it is stated:

• … a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new and distinctive.

While not expressly stated in the legislation, the informed user standard is inherently the standard as it existed at the priority date of the design. If this were not the case the assessment of the distinctiveness of a design would become dependant upon its subsequent commercial success. As a result, when determining the informed user standard the examiner needs to exclude from consideration any developments that have occurred subsequent to the priority date. Likewise when assessing evidence provided by the owner – developments that occurred subsequent to the priority date are not material to establishing the informed user standard.

Apple Computer Inc [2007] ADO 5, concerned the number of electrical contacts inside a USB connector for a computer. The delegate concluded that at the priority date users of USB connectors never looked inside to see the contact layout. The delegate noted:

I should further emphasize that the standard of the informed user must be applied as at the priority date. [s.15(1)]. If this USB connector became commonplace, it might well be the case that informed users would change their habits in certain environments such that they would look inside a USB connector to assess whether it was a standard four-contact connector, or the ‘enhanced’ nine-contact connector. But at the priority date of the design the USB Type-A connector was, to the best of my knowledge, only available in the



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standard 4-contact version. And with that connector there was never any reason for the user to look inside the connector and notice the contact configuration.

The issue of whether the informed user can be a child is particularly relevant for toys, and for children’s clothing. The following propositions would seem appropriate:

• Where the design is in respect of a product which is intended to be bought by children (for example, with pocket money), the informed user would be such children;

• Where the product is usually bought by an adult (for reasons of cost or the like), but the decision to purchase is strongly influenced by the expectations of the child it is bought for – the informed user would be such children;

• Where the product is usually bought for a child, with the attitudes of the child to the product being of little consideration (for example: the child is an infant; or the product is bought to meet developmental requirements) the child would not be the informed user.

In Ferrari S.P.A v Dansk Supermarket A/S R0084/2007-2, 25 January 2008 the informed user for a design for a ‘toy car” was a child. However in Aktiebolaget Design Rubens v Backlund, ICD 461 no indication was given about whether the informed user is (for example) the purchaser of the doll (presumably an adult), or the user (presumably a child)

It may be noted that the wording of s.19(4) defines the informed user standard in relation to a person. Consequently where a design is in relation to a product used by an animal, the informed user cannot be that animal.

In Mars UK Limited v Paragon Products BV, Case R1391/2006-3, 25 January 2008, the informed user for a dog chew product was held to be “a dog owner’.

D09.4.6.4 Assessing declaratory evidence to establish the standard of the informed user

When declarations are filed to establish the standard of the informed user, they must necessarily be assessed in the context of the particular case. However the following questions may assist with deciding the weight to be attached to assertions made in the declaration:

• How does the declaration indicate the relevance of the declarant to establishing the standard of the informed user?

• Is the declarant a user, as distinct from a manufacturer/supplier/designer?

• On what basis can the declarant be said to be a ‘user’ of the product?

• Is the declarant’s use typical of all users, or merely of a small subset of users (such as aficionados)?

• What is the basis for accepting any assertions as relating to the typical informed user, rather than the particular views of the declarant?



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• If the declarant lives in another country, what is the basis for accepting their views as relating to the informed user standard in Australia?

• If assertions appear to lack inherent credibility, how does the declarant justify those assertions?

It should be noted that a declaration does not constitute ‘proof’ of anything stated therein. In a legal sense, it is merely evidence. Consequently, while it will usually be appropriate to accept declaratory evidence at face value – this is not obligatory. For example, in Apple Computer Inc [2007] ADO 5 the design related to the internal pin configuration of a USB connector for a computer. A declaration to establish the informed user standard was provided by the IT manager of the attorney firm representing the owner. The delegate stated:

The USB port is clearly intended for use by the ‘ordinary’ computer user; it is not a port intended to be used primarily by IT experts. In my view the relevant informed user for the present design is a person who has general familiarity with computers, and is comfortable with purchasing and attaching USB-based peripheral devices to achieve the use they desire of their computing system. It is not the person who has acquired a computer but is uncomfortable with buying or attaching peripheral devices such as cameras and game boards. And it is not the IT expert who is familiar with all the intricacies of a computing system. Accordingly while it is apparent that Mr Boorman is likely to be a person who is very knowledgeable about computers, in my view he is not representative of the informed user standard. And there is nothing in his declaration to indicate that his comments are otherwise reflective of the informed user standard (as distinct from his own specialist-based views). Accordingly I consider the views Mr Boorman has expressed about the informed user standard are to be accorded low weight.

The delegate went on to express his views about how users connect USB plugs, and concluded that the informed user of a USB connector would not look inside the connector and notice the contact layout – and therefore the design lacked distinctiveness over a usual USB connector. The delegate went on to state:

In coming to these conclusions, I am very conscious that I do not have before me any declaratory evidence from people who fall into the category of informed user for this product. However I am obligated to assess the design by applying the standard of an informed user. In that regard the Registrar:

... is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory ..., he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the {Commissioner} based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.



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The Apple Computer decision was referred to with approval in LED Technologies v Elecspress Pty Ltd [2008] FCA 1941 at para 58. [It is also referred to in Review No 2 v Redberry Enterprises [2008] FCA 1588 at para 25 and following, but the comments there made would appear to be in response to submissions about the Apple case made at the hearing – rather than the case itself.]

It may be noted that situations where an examiner would substitute their view on the standard of the informed user in contradiction to evidence supplied by the owner, are unusual. In the ex parte environment of examination, two particular situations can arise in practice:

1. The declaration makes relevant assertions, but the material provided in the declaration is insufficient for the examiner to accept those assertions as indicating the standard of the informed user, as distinct from the standard or personal views of the declarant. In such situations it would be appropriate to request further material in support of the relevant assertions so that the examiner can be reasonably convinced of the correctness of the assertions being made.

2. The examiner positively disagrees with the assertions being made by the declarant. For the examiner to come to this conclusion, they must have a clear basis to make the contrary assertion. If the basis is merely the examiner’s own belief, an objection cannot be maintained – there must be some evidentiary basis for disregarding the assertions of the declarant. Any report based on such disagreement must be referred to the Deputy Registrar before it is issued.

This issue is discussed further under Being ‘satisfied’ – see D03.9.

D10 Amendments


1

Chapter 10 - Amendments

D10 Amendments


3

Table Of Contents D10 Amendments ................................................................................................................. 5

D10.1 Overview .................................................................................................................... 5

D10.1.1 How amendments are ‘Made’ .............................................................................. 6

D10.2 Ambit of s.28 amendments ......................................................................................... 7

D10.2.1 Time for making S.28 amendments ..................................................................... 7

D10.2.2 Amending a Statement of Newness and Distinctiveness ...................................... 8

D10.2.3 ‘Voluntary’ requests to amend under s.28 ............................................................ 8

D10.3 Ambit of s.66 amendments ......................................................................................... 9

D10.4 Allowabililty - inclusion of matter not in substance disclosed ..................................... 10

D10.5 Allowability - increasing scope of the Design Registration ........................................ 12

D10.6 Amendments of Statement of newness and distinctiveness ...................................... 14

D10 Amendments


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D10 Amendments

D10.1 Overview

The Designs Act provides four amendment mechanisms:

1. S.28, together with R.3.09. – Amending a design application before registration. This most frequently arises consequential to the formality check under s.41. The only limitation is that the amendment must not alter the scope of the application by the inclusion of new matter.

2. S.66, together with R.5.05. – Amending the registration during examination. The amendment must not increase the scope of the design registration, and it must not alter the scope of the application by the inclusion of new matter.

3. S.120 – Rectification of the Register ordered by a court (which could include amendments).

4. Reg 9.05 – Correcting clerical errors and obvious mistakes on the Register (as well as name and address changes).

This part of the manual is concerned with amendments under s.28 and 66. Amendments under reg.9.05 are dealt with in D12.4. Court ordered rectifications are dealt with in D12.5.

The ALRC report contains no detailed discussion on amendments – Recommendation 83 (accepted by the Government) merely recommended the retention of s.22B of the 1906 Act. S.22B contained a combined form of the concepts of increasing the scope of the application for registration, and of including matter not in substance disclosed. The 2003 Act has separated these concepts into discrete criteria - with only the ‘in substance disclosed’ criterion applying before registration. The limited precedent on s.22B of the 1906 Act must therefore be considered with care. Some assistance may be obtained from precedence under the amendment provisions of the Patents Act, where these concepts have been traditionally treated separately – although care is required, given the differences in how the monopoly right is obtained under the different Acts.

The allowability of amendments to a design may involve a determination of the disclosure of the design before amendment, and the effect of the amendment on the scope of the design. Since such amendments directly affect the s.19 considerations of distinctiveness, consistency requires the determination of the disclosure before amendment, and the effect of the amendment on the scope of the design, be assessed by reference to the standard of the informed user. See D09.9.2

Where the examiner considers an amendment is not allowable because it increases the scope, includes matter not in substance disclosed (or is not a clerical error or obvious mistake), the question of ‘burden of proof’ may arise. Where the examiner raises an objection based on s.66(6), the owner needs to provide material sufficient to justify the administrative exercise by the Registrar or her delegate, of the power to amend the Registration. That might be by way of persuasive argument, or declaratory evidence from relevant informed users. [See D09.9.4 regarding assessing such material.]

D10.1 Overview


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Submissions that the examiner must ‘prove’ that the amendment is contrary to the s.66(6) requirements (or mere assertions that the examiner is wrong) indicate a misunderstanding of the owner’s obligations. The owner needs to provide the Registrar with clear and convincing reasons (based on the design and any relevant supporting material) why she should exercise her power to amend the registration. Mere assertions that the examiner must prove the amendment is contrary to s.66(6), or that the ‘examiner is wrong’, do not provide the Registrar with any reason to exercise her power to amend the design.

D10.1.1 How amendments are ‘Made’

The process of making amendments under the Designs Act involves the following steps:

1. The applicant or owner proposes amendments;

2. The Registrar considers the amendments for allowability under the Act or regulations

3. And if allowable and at an appropriate stage, the amendments are ‘made’ and incorporated into the relevant documents.

In the examination process, the amendments remain as ‘proposed amendments’ up until a certificate of examination is issued. It may be noted that if a third party is heard pursuant to s.67(3), the fact that the amendments still have the status of proposed amendments allows the third party to challenge the validity of those amendments (providing that would have a consequential effect on the validity of the Design).

During examination, amendments are made by way of s.66. As is made clear by regulation 5.03(5), further reports must consider whether grounds of objection would be removed if the register were amended as proposed in the request. Similarly, when the examiner completes the examination, s.67(2) refers to the giving of a notice that a ground of revocation could be removed if the Register were amended as proposed. And s.67(3) provides for the actual amendment of the Register.

A request to amend may involve several individual items. For example, a change to the product name as well as a change to a representation. While an examiner may typically raise objections with respect to only some specific items of the amendments, allowance of the amendment is made with respect to the entire amendment request (as amended). In particular, there is no scope for an examiner to selectively allow some amendments and not others. Nor (for amendments under s.28 or regulation 9.05) is there scope to make some of the requested amendments, while arguing over the allowability of others.

Chapter 11 - Extension of Time - s. 137

Table Of Contents D11 Extension of Time - s.137 .................................................................................. 1

D11.1 Introduction ..................................................................................................... 1

D11.1.1 Calculating the expiration of a Time Period under the Designs Act ....... 1

D11.2 s.137(1) - Error or Omission by the Registrar... ............................................... 4

D11.2.1 General Considerations ........................................................................ 4

D11.2.2 Advertisement of section 137(1)............................................................ 6

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner ........... 6

D11.3 s.137(2) - Summary of the Principles of Law ................................................... 7

D11.3.1 Beneficial Nature of Section 137 ........................................................... 7

D11.3.2 Burden of Proof ..................................................................................... 7

D11.3.3 Nature of an Error or Omission ............................................................. 7

D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act ................ 8

D11.3.5 Balance of Factors Including Full and Frank Disclosure ........................ 9

D11.3.6 Circumstances Beyond Control ............................................................. 9

D11.4 Making the Application - s.137(2) .................................................................. 11

D11.4.1 General Comments ............................................................................. 11

D11.4.2 Person concerned: Change of ownership ........................................... 11

D11.4.3 Extension of priority period – requesting Registration ......................... 12

D11.4.4 Fees Payable ...................................................................................... 12

D11.5 Registrar's Discretion - s.137(2) .................................................................... 14

D11.5.1 General Comments ............................................................................. 14

D11.5.2 Lack of Purpose .................................................................................. 14

D11.5.3 Private and public interests ................................................................. 14

D11.5.4 Functus Officio .................................................................................... 15

D11.5.5 Delay .................................................................................................. 15

D11.5.6 Protection Provisions .......................................................................... 15

D11.6 Advertisement of Extension - Subsection 137(4) ........................................... 16

D11.6.1 General Requirements ........................................................................ 16

D11.6.2 Directing Advertisement ...................................................................... 16


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D11.7 Period of Extension to be Granted ................................................................ 18

D11.7.1 General Principles .............................................................................. 18

D11.7.2 Extensions for Completion of Examination .......................................... 18

D11.7.3 Renewal due before Design restored .................................................. 18

D11.8 Common Deficiencies ................................................................................... 20

D11.9 Protection and Compensation Arrangements ................................................ 21

D11.9.1 Extensions granted under the Designs Act 2003 ................................. 21

D11.9.2 Extensions granted under the Designs Act 1906 ................................. 22


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D11 Extension of Time - s.137

D11.1 Introduction

The extensions of time provisions in the Designs Act 2003 are provided by section 137 and regulation 11.13. Section 137 is universally applicable. S.137 also applies to applications proceeding under the preserved provisions of the 1903 Act – see s.153(2).

The provisions of s.137 are essentially the same as s.223 of the Patents Act 1990, and s.224 of the Trade Marks Act. Accordingly the precedent under those Acts provides relevant precedent for corresponding provisions of s.137.

When considering precedent under the Trade Marks Act, regard must be had to the effect of the exclusions from an extension of time set out in regulations 21.28 of that Act.

The Act provides for the possibility of excluding an extension of time being granted for certain matters, by way of the definition of ‘relevant act’ at the end of s.137. Currently (2008) no actions have been prescribed for that purpose. Accordingly any time period set in the Act or Regulations for the doing of an act is capable of being extended.

D11.1.1 Calculating the expiration of a Time Period under the Designs Act

S.137 applies when an act required to be done within a certain time is not, or cannot be, done within that time. The ‘rules’ about how to calculate that period are as follows:

1. There must be a relevant period recognized in the Act that can be extended. Thus the time for filing a convention application is capable of being extended, but there is no relevant period for filing a first-instance application.

Note: An extension of time does not change the date on which the relevant action occurred. An extension of time merely extends a relevant period to the actual date of the relevant action, thereby maintaining the associated benefit.

2. The basis for calculating the end of a period is primarily governed by s.36(1) of the Acts Interpretation Act.

36 Reckoning of time

(1) Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event.


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Importantly, this does not reset the date of the period for the purpose of calculating subsequent periods.

3. The basic rule for calculating a period in months is that the due date is a date having the same day number. For example, one month from the ‘x’ of March is the ‘x’ of April. Where the start date is the last day of a month, there may be no corresponding day number in the future month. In this case the relevant day is the last day of the future month.

When the start date is the last day of a month, the requirement that the period is exclusive of the given day is particularly relevant. The approach is:

• Add 1 to the starting date;

• identify the future date having the corresponding day number,

• subtract 1 day.

For example:

• 1 month from the 31 March is 30 April. [31 March + 1 day = 1 April. 1 April + 1 month = 1 May. 1 May less 1 day = 30 April].

• Similarly, 1 year from 29 February is 28 February. [29 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 28 February].

• Conversely, 1 year from 28 February in a non-leap year is 29 February in a leap year. [28 February + 1 day = 1 March. 1 March + 1 year = 1 March. 1 March less 1 day = 29 February].

[See the definition of Month in s.22 of the Acts Interpretation Act].

4. Where a period expires on a day where IP Australia (or any of its sub-offices) is not open for business, the calculation of the last day when the action can be done is governed by S.136A and Regulations 11.32 and 11.33 – and any declarations under s.136A(2)(b) [which are published in the AOJD]. S.36(2) of Acts Interpretation Act does not apply [s.136A(6)].

This provision has the following effects:

• If IP Australia is closed for business at all locations, the action can be done on the first subsequent day when IP Australia is open for business; and

• If IP Australia is closed for business at some (only) of its locations, the action can be done AT THAT LOCATION on the first subsequent day when IP Australia is open for business at that location. If the action is done on a subsequent day at a location which was open on the relevant day, the action will be out of time.

Note: If the action is done by electronic means, the critical consideration is whether IP Australia in Canberra was open for business on the relevant day.


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Where IP Australia in Canberra was open for business on that day but a State Office was closed, an action undertaken the next day at that State Office via electronic means (such as fax) does not obtain the benefit of the closure at that State Office, and will be out of time.

Where the relevant action to be done within the time period is an action by the Registrar, it is the location of the person exercising the Registrar’s powers that is relevant. This is very important in examination. When the final day for completion of examination falls on a day that is not a holiday in Canberra, the fact that it is a holiday in another location does not affect when the design ceases for failure to complete examination. That is, the owner cannot rely on the local public holiday to file a response the following day.


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D11.2 s.137(1) - Error or Omission by the Registrar...

D11.2.1 General Considerations

Extensions of time under this subsection arise because of an error or omission made by the Registrar or a Deputy Registrar; an employee of the Designs Office; or a person providing, or proposing to provide, services for the benefit of the Designs Office. Note the use of the word "must" – which means that once the existence of a relevant causative error or omission has been established, there is no discretion about whether an extension should be granted.

The duty statements for all employees of IP Australia include the duty to assist the Registrar of Designs to perform his or her function. Consequently all employees in IP Australia are an "employee of the Designs Office".

The granting of an extension of time under this provision entails an express admission that the Registrar has made an error or omission. Because such admissions may have other legal consequences, extensions of time under s.137(1) are not lightly granted. However where it is clear that the Registrar has made an error or omission, the existence of such other consequences is irrelevant to whether or not an extension should be granted.

The legislation does not require the applicant provide a declaration setting out the grounds on which the application is made. Indeed, usually the applicant will have no real knowledge of the relevant facts. However it is sometimes necessary that the applicant provide a declaration, because the Registrar is not aware of the relevant facts – for example, if a person misses a time limit pursuant to receiving misinformation from the Office.

Example: An Attorney acted on the basis of information obtained by querying IP Australia’s electronic information system. At the time this was done, incorrect data had been entered on the system by an Office employee; by the time the application for extension was received, that data had been corrected – so there was no way the delegate could verify the Attorney's allegation. The problem was resolved by the Attorney filing his own print out (including the incorrect data) annexed to an explanatory declaration. A similar solution would apply where oral information only is involved – although file notes on the case file might provide sufficient evidence to support the action without the need for the applicant to file a declaration.

A finding that there has been an error or omission is not in itself enough to require the grant of an extension of time. There must be a causal link between the error or omission and a relevant act that must be done within a certain time and which either is not done or cannot be done within that time. The causal link is described by the use of the word "because" in sub-section 137(1). Errors of a person which are claimed to be due to incorrect advice from the Registrar will generally fall under section 137(1) if the person:

• sought advice from the Registrar This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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• in seeking the advice, provided all relevant information, or provided sufficient information for the Registrar to realize that further information was required before providing the advice

• the advice given was demonstrably wrong

• the applicant acted on that wrong advice, and

• as a result, a relevant act was not done within the required time.

See R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jiejing Pty Ltd v Commissioner of Patents & Ors (1995) AIPC 91-144.

In Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. and Regeneron Pharmaceuticals Inc v Amgen, Inc [1997] APO 69 (19 December 1997), the potential opponent to a s.223 (patents) application sought copies of the material in support of that application from the Patent Office. That material was not provided until after the opposition period had expired. The potential opponent did not file an opposition until after it had received the material. The delegate, in allowing an extension under section 223(1)(Patents), held that the failure of the Commissioner to timely respond to the request for information was an omission that prevented Amgen from making any responsible decision as to whether they should file an opposition, and therefore prevented it from filing a notice of opposition. In doing so, the delegate stated:

"However it cannot be in the public interest, let alone the interests of either party, for there to be any expectation that an opponent must file an opposition in ignorance, where their ignorance of what is to be opposed is beyond their control. Thus in cases where an opponent is unable to ascertain from the Patent Office any material fact concerning that which might be opposed, I do not consider it reasonable (let alone desirable) to expect the opponent to file what must be (in such circumstances) a speculative opposition."

Where the necessity for an extension arises pursuant to the temporary loss of a case file or a fee payment within the Office, the circumstances surrounding the problem are entirely within the Office and within the knowledge of the delegate (perhaps after appropriate enquiry), and it is generally inappropriate to require the applicant to file a declaration.

Comment: Where a response has been received to an examination notice, the case file has gone missing, and the time for completion of examination is about to run out – the owner should be contacted, the situation explained, and the owner reassured that s.137(1) will be used to extend the time for completion of examination for a period equal to the period in which the file was not located. If a third party requested examination, they should similarly be advised.

Where a response to an examination notice is received very close to the end of the period for completion of examination, and the response is not considered before the time for completion has expired, the question may arise of whether the time for completion of examination should be extended under s.137(1). Generally speaking, if the response was filed with sufficient time for the examiner to properly consider the response and the examiner failed to attend to the response, s.137(1) will be enlivened.


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Note: When a response is filed close to the date for completion the owner has some responsibility to ensure the examiner is aware that the response has been filed – such as by telephone contact, and/or faxing the response to the examiner. In particular, filing a response at a State Office of IP Australia on any of the last few days for completion of examination will unlikely give the examiner enough time to consider the response before the time for completion of examination has expired, and any extension of time would likely need to be dealt with under s.137(2)

D11.2.2 Advertisement of section 137(1)

Extensions of time granted under section 137(1) must be advertised as allowed [regulation 11.13(4)]. Extensions under subsection 137(1) are not advertised for opposition purposes under s.137(4) as they do not involve an ‘application’ for an extension of time as in s.137(2).

However, in some cases there is a known third party whose interests may be adversely affected by granting the extension. In these cases, the Registrar will not proceed to grant such extensions until the Registrar has ascertained whether that party objects the extension [any such objection being limited to the question of whether there has been a relevant error or omission by the Registrar.]

Comment: This situation would most likely arise in examination proceedings, where a third party who has requested examination is clearly an interested third party. The hearing is limited to the issue of whether there is a relevant causative error or omission, since once that fact is established there is no discretion involved in the granting of the extension. For an example, see R Thomas & A Garnham v Jeijing Pty Ltd 29 IPR 441, and the decision on review Jeijing Pty Ltd v Commissioner Of Patents & Ors. (1995) AIPC 91-144.

D11.2.3 Delayed or Non-receipt of an Examination Notice by the Owner

Section 137(1) may be applicable to extend the time for completion of examination where an examination notice was established but was not received e.g. because it wasn’t sent, or it was sent to the wrong address for service.

Where it is clear that the first examination notice was not dispatched (for instance, the report is in the case file), the appropriate remedy is to reissue the first notice rather than grant an extension under section 137(1) – and reset the time for completion of examination. [Note that section 66(2) requires the Registrar to give a copy of each notice to the owner, and the time for completion of examination runs from the date of that notice.]

Note: If the report was sent to the correct address but was delayed or not received (e.g. delayed or not delivered by post), subsection 137(2)(b) is the appropriate remedy. If the report was received but misplaced by the applicant, subsection 137(2)(a) is the appropriate remedy.


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D11.3 s.137(2) - Summary of the Principles of Law

D11.3.1 Beneficial Nature of Section 137

Section 137 is beneficial in nature and should be applied beneficially; (re Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 480, Chalk v Commissioner for Superannuation (1994) 50 FCR 150, at 156). Section 137 is a general remedial section and has general application, applicable unless there is some clear indication to the contrary. (See Scaniainventor v Commissioner of Patents (1981) 36 ALR 101 and Danby Pty Ltd v Commissioner of Patents and Another 12 IPR 151).

However, there needs to be a relevant time period to extend. In particular, section 137 cannot normally be used to ‘extend’ the time for filing a design application where no earlier priority rights exist.

In Norman Stibbard v The Commissioner of Patents 7 IPR 337 the AAT upheld the delegate's decision to refuse an extension of time to lodge the {patent} application:

"The Tribunal considers that, as expressed by Stephen J, as he then was, s160(2) does not contemplate what amounts effectively to antedating the lodgment of a complete specification so as to effectively defeat the interests of other inventors who have lodged their specifications more promptly. If it were otherwise, the lonely inventor working away unaware of the inventive steps of others would suffer a rude shock if he promptly lodged his application and specification only to be defeated by a less prompt inventor applying under section 160(2) for an indulgence."

D11.3.2 Burden of Proof

While the applicant has the burden of placing before the Registrar the circumstances which it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it should be so described; [Re Sanyo Electric Co Ltd and the Commissioner of Patents (1996) 36 IPR 470 at 479]. What is required is material sufficient to justify the administrative exercise of the relevant power.

D11.3.3 Nature of an Error or Omission

For an extension to be granted, there must have been "an error or omission." Although there is no clear or complete meaning for the words "error or omission" a distinction should be drawn between:

• errors or omissions affecting the carrying out of the parties' intentions, and

• the consequences of deliberate decision: [Total Peripherals Pty Ltd v IBM & Commissioner of Patents, (1998) AATA 784 (30 September 1998)].


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The definition of an error or omission was expressed by Jenkinson J in Kimberly- Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569 in the following terms [the references are to s.160 of the Patents Act 1952, which is equivalent to s.137 of the Designs Act 1903].

"It is in my opinion difficult to suppose that only the inadvertence and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160 (1). Further, the word 'error' is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgement by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slip. …"

"I do not think that the conclusion I have reached reduces s 160(2)(a) to a mere general power of extension. By no means every judgement by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness of error."

This was further considered in G S Technology Pty Limited v Commissioner of Patents 63 IPR 9.

“[65] Most errors and omissions which lead to a failure to do an act or take a step are the result of negligence or incompetence. Where such errors and omissions are made against a clearly demonstrated desire to maintain the application (and thus not have it lapse), and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt, as is the case here, the considerations in favour of an extension seem to me to be quite persuasive.”

“[72] … assessing the conduct and state of mind of a person who is not a patent attorney against standards of what a competent attorney would have known, or would have done, to determine whether a discretion should be exercised, is wrong in principle.”

“[82] The observations of Jenkinson J in Kimberly-Clark specifically note that an extension can occur with or without moral fault on the part of the agent. Further, what his Honour in fact said was that it was necessary to have means to evaluate the applicant’s moral claim to an indulgence, so that if there has been an absence of full and frank exposure of the circumstances relevant to the failure to do the act or make the step occurred, the means to evaluate the applicant’s moral claim to an indulgence will be lacking.”

Note: If the Registrar has good reason to believe the error or omission has arisen from the conduct of the agent, the extension should be granted on that basis even if it is not raised or relied upon by the agent when prosecuting the s.137 request. G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391.

D11.3.4 Error Must Be Causally Linked to Failure to do Relevant Act


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There must be a causal connection between the error or omission and the relevant act that is required to be done within the stipulated time. In addition, the applicants for an extension must demonstrate that they had an intention to do the relevant required act, and that an error or omission on their, or their agent's behalf, reasonably could be said to have caused the failure to complete the relevant act in the time prescribed; (see Kimberly-Clark, supra at 579)

The mere fact that an act was not done is not itself a causative error. The causative error is the thing that resulted in the act not being done.

D11.3.5 Balance of Factors Including Full and Frank Disclosure

The balance of the relevant factors must favor the exercise of the discretion in favor of the applicant for an extension. The Registrar, in balancing these factors, is entitled to proceed on the basis that it is more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time; (Sanyo v Commissioner of Patents, supra, at 479). Relevant factors include whether an applicant for an extension has given a full and frank disclosure of all the surrounding circumstances that led to the error or omission, including a disclosure of the chain of causation (Kimberly-Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569). At page 583 Jenkinson J found that, in order to make out a proper case justifying an extension:

"an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes (or, in the case of corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."

Note: However, the Tribunal's discussion in Sanyo v Commissioner of Patents at 479 regarding the context in which Jenkinson J made these comments; and G S Technology Pty Limited v Commissioner of Patents 63 IPR 9 at [82].

D11.3.6 Circumstances Beyond Control

‘Circumstances beyond control’ is a force majeure provision. A force majeure is outside the control of the person concerned and something that could not have been avoided by that person's exercise of due care.

Delays by post and courier constitute the major source of these extensions. In some situations sickness or accident satisfy the requirement of this paragraph, e.g. if an applicant prosecuting his or her own case becomes seriously ill such that they cannot reasonably be expected to attend to their affairs at the relevant time, the probability is that he or she would be entitled to an extension. On the other hand, if a technical assistant to a firm of Attorneys missed a time limit owing to an illness, it would be expected that the firm would have made arrangements accordingly, in anticipation of this kind of occurrence. If not, it would appear that whereas error or omission might be involved, ‘circumstances beyond control’ would not be involved.


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An action not done because of lack of funds is generally not a ‘circumstance beyond control’ (Vrubel v Upham 36 IPR 220). In particular, becoming bankrupt is not a circumstance beyond control within the meaning of s.137 (Reilly v Commissioner of Patents 36 IPR 314 at [49]). In this context it should be remembered that a sequestration order is made as the culmination of a sequence of events which the applicant could have avoided with the exercise of due care.

Anticipation of a Court judgement has been held to be a circumstance beyond a person's control (Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham 1995 AIPC 91-144 at paras 104 and 105).

The Courts consider that the applicant "stands in the shoes of his agent", to the extent that errors or omissions made by the agent (or by the agent's employees) are attributed also to the applicant. "Employee" here means a direct employee and not an intermediary such as a courier or a postal authority. Arguments that an error or omission by the agent were beyond the control of the applicant are to be rejected.

"circumstances beyond the control of the person concerned" has been interpreted in:

• Board of Control of Michigan Technological University v. Deputy Commissioner High Court - (1982) AIPC 90-005, Federal Court - (1981) 34 ALR 529

• Rohrmoster v. Registrar of Trade Marks 7 IPR 551;

• Abbott & Lamb Pty Ltd v. Registrar of Trade Marks (1991) AIPC 90-806;

• Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham 1995 AIPC 91-144;and

• Solar Mesh Pty Ltd v Commissioner of Patents (1995) AIPC 91-138.

It may be observed that often the motivation for arguing that the extension should proceed under s.137(2)(b) is the more favorable fee treatment compared to s.137(2)(a) – particular if the extension is for a long period of time. [See fee items 7 and 8.] This is particularly the case where the evidence clearly shows the existence of a relevant error or omission that would justify an extension under s.137(2)(a). However such considerations are per se irrelevant to whether an extension should be granted.


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D11.4 Making the Application - s.137(2)


Regulation 11.13(1)(b) requires that for the purposes of section 137(2) an application for extension must

• be in the approved form (form D/00/311 or equivalent)

• have with it a declaration setting out the grounds on which the application is made.

Situations may arise where it is not possible for the applicant to file the declaration with the application form. In such cases the declaration should be filed as soon as practicable thereafter. Delay in filing the declaration is a factor the Registrar needs to consider when exercising discretion on the application. In fact, given the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

Where a declaration is not filed with the application, the Registrar will allow 2 months for a party to file their declaration. If the declaration is not filed within this time, the matter will be set for hearing with a view to refuse the section 137 request. Any declaration received before the hearing will be considered as quickly as possible, with the hearing being cancelled if it is no longer necessary.

D11.4.2 Person concerned: Change of ownership

Usually, the applicant or owner of record makes the application under section 137. However, occasionally there is a change of owner of the design or application that has not been registered or recorded before the section 137 application is made. In such cases, processing of the section 137 application will be conditional upon the filing of a request to record the transfer of interest from the applicant or owner of record.

If ownership of the design changed before the design ceased (e.g. by an assignment dated before the ceasing date), the change of owner will generally need to be registered before the section 137 application is advertised for opposition purposes. In order to overcome the type of issues that arose in Reilly v Commissioner of Patents 36 IPR 314, the assignee will need to explain in their section 137 application any failure to record the assignment at an earlier date. Depending on the facts, a deliberate intention not to record an assignment may be prejudicial against a favorable exercise of discretion by the Registrar.

Reilly involved a situation of a bankrupt who failed to disclose his Patent to his trustee in bankruptcy (who would have been entitled to be recorded as the owner). There was also a deed of assignment (not signed by the assignee) purporting to assign the patent in the event of him becoming bankrupt.

In the case of an assignment that was made after the design ceased, the Registrar will record any change in title or interest on restoration of the design. Until that time the section 137 application will need to proceed in the name of the owner of record.


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In this case, the relevant error or omission is necessarily associated with the actions of the owner of record, and the evidence in support of the extension must be on that basis.

In any of the above cases, the section 137 applicant will need to establish that an error or omission was made by the person concerned at the relevant time. In The University of Newcastle Research Associates Limited [2001] APO 64 (12 November 2001), the equitable owner took an assignment after the owner of record had made a deliberate decision not to proceed (with national phase entry). As a consequence, the equitable owner was unable to satisfy the requirements of section 137.

D11.4.3 Extension of priority period – requesting Registration

As a general principle, an extension of time is only granted for those matters for which an extension is sought. Furthermore, prior to the grant of the extension of time the applicant needs to act on any time limits that arise in the interim on the assumption that the extension will be granted.

A priority claims needs to be made at the time of filing [D06.1.3]. If the application is amended after filing to add a priority claim, an extension of time under s.137 will be required. Similarly, if the details of the priority claim are amended after filing, and that amendment has the effect of creating a new priority claim, an extension of time under s.137 will similarly be required. (A convenient test is whether the amendment of the priority claim is effectively the correction of an obvious mistake – see D12.4.2)

However the effect of any such extension on the requirement to request registration or publication within 6 months of the priority date [reg 4.01(2)] must be considered. In particular, if a request for registration or publication has not been filed, will the grant of an extension of time for making the priority claim result in the application lapsing through not having requested registration or publication? In such cases the applicant should file the request for registration or publication no later than the time of filing the request to extend the time to claim convention priority – with the extension request expressly referring to both the time period for filing the application, and the time period for requesting registration. If the applicant files the request for registration after filing the request to extend the priority period, a new error or omission is involved – and a separate extension of time will be required.

See also D11.7.3.

D11.4.4 Fees Payable

Fee items 7 and 8 of Schedule 4 of the regulations indicate the fees payable for extensions under sub-section 137(2). In all situations, the fee payable is determined by the length of the extension granted, not by the date on which the extension is granted.

Regulation 11.01(5) specifies that the fee is payable at the time of filing the request. Under regulation 11.06, if the section 137 fees have not being paid on filing then an ITP (invitation to pay) will issue. Failure to issue the notice within time will enliven the provisions of regulation 11.10. If the fee is not paid within 2 months, the request for an extension of time is deemed not filed [Reg 11.06(2)]


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If the applicant withdraws the request for an extension of time, fees paid for filing the s.137 request are generally not available for refund.


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D11.5 Registrar's Discretion - s.137(2)


Subsection 137(2) uses the word "may", and is therefore a discretionary power. That is, even though the terms of para (a) or (b) of subsection (2) may be satisfied, the Registrar is not obliged to grant an extension. There are a number of important factors to be considered here, including the purpose of the extension, the private interests, and the public interest.

The decisions of the courts concerning the approach to be taken to the exercise of discretion to extend time are well established; Sanyo v Commissioner of Patents 36 IPR 470 at 479. Importantly, the exercise of discretion cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213).

In New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48 (21 September 2001), the delegate, in applying Sanyo, exercised the discretion under s.223 despite the lack of justification for the extension. The delegate considered that it is "more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time": per Davies J in Chalk v Commissioner for Superannuation (1994) 50 FCR 150, at 156, with whom Black CJ and Cooper J agreed. Similar comments are to be found in Comcare v A'Hearn (1993) 119 ALR 85, particularly at 88. Actions of the agent of a principal should not necessarily be regarded as being the actions of the principal: A'Hearn's case. A legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially: Davies J in Chalk's case at 155.

D11.5.2 Lack of Purpose

The granting of an extension is the granting of an indulgence, and an indulgence should not be granted that serves no useful purpose. For example, where it is manifestly clear that it would not be possible to issue a certificate of examination under the terms of the Act, an extension of time should not be granted to extend the time for completion of examination. Another example is matters in which the Registrar has become functus officio (see D11.5.4 Functus Officio).

D11.5.3 Private and public interests

In exercising discretion, it is appropriate to have regard to the public and private interests. This is a particular issue where it is clear that there is a third party interested in the design – such as a third party who has requested examination, and the owner is seeking an extension of the time for completion of examination. In situations where the request under s.137 is not to be advertised under s.137(4), it may be appropriate for the Registrar to invite that third party to comment on the extension, and for that party to be heard as a matter of choice, pursuant to the


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requirements of reg 11.22(1). The public interest can best be related to the question of "delay" (see D11.5.5 Delay).

D11.5.4 Functus Officio

As a general rule, administrative decision-makers cannot re-make a final decision unless the relevant legislation permits them to do so. The decision-maker, having made a final decision in the exercise of a statutory power, is said to be functus officio with respect to that power. In this regard, the Designs Act does not make provision (either express or implied) for the Registrar to withdraw the registration of a design, or a certification of examination.

However, in some circumstances the purported decision in relation to registration or certification may have no legal effect, and so can be treated as if it had not been made at all. An administrative decision that involves jurisdictional error is a decision that lacks legal foundation and so is properly 'regarded, in law, as no decision at all'. See the High Court decision Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 187 ALR 117.

In British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1566, an application for an extension of time to file an opposition was filed late on the day before registration of the trade mark occurred. Registration occurred early the next day, before the application came to the attention of the relevant staff. The Federal Court held that the Registrar was not empowered to register the trade mark without first considering the application for extension of time.

D11.5.5 Delay

Inordinate delay in filing an application for an extension of time, or in filing available relevant material in support, is potentially detrimental to the public interest. Consequently it is expected that where such a delay has occurred an explanation in declaratory form will be provided. In any event, the Registrar will need to be satisfied that any further or unnecessary delay which has hampered having the matter dealt with at the earliest possible date was not caused to any significant extent by the actions of the applicant for the extension of time (Sanyo v Commissioner of Patents 36 IPR 470). It should be remembered that because of the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

D11.5.6 Protection Provisions

The provisions of section 139 provide for the protection of parties who took definite steps to use a design commercially after registration of the design had ceased. It is a relevant consideration when exercising the discretion under section 137 that anyone who has made commercial use of the design is protected under these provisions. (Sanyo v Commissioner of Patents 36 IPR 470).


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D11.6 Advertisement of Extension - Subsection 137(4)

D11.6.1 General Requirements

Where an application is made for an extension of time for more than 3 months, it is mandatory to advertise the extension – s.137(4). In response to the advertisement, a person may oppose the granting of the extension, as provided in sec 137(5).

The requirement to advertise is mandatory where the total extension sought is based on a single set of grounds under para (2)(a) or (2)(b). For example, suppose extension is required for the purpose of completion of examination. Initially, a period of 3 months only is applied for, because this period was perceived as adequate, even though the circumstances under para (2)(a)/(2)(b) justified a much longer extension. If it is then found that the 3 months is inadequate, the applicant would be entitled to the grant of a further period. However, as soon as the total period exceeded 3 months, s.137(4) has effect, and the total extension must be advertised. Note that the decision to advertise is not based on the fact that the total period sought for a single purpose (here, completion of examination) exceeds 3 months, but that the total extension based on a particular set of grounds exceeds 3 months. That is, it would be legitimate to grant an extension (unadvertised) for completion of examination, of a 3 month period, based on grounds under para (2)(a), and to subsequently grant a further 3 months extension period for acceptance, based on grounds under para (2)(b), or even different grounds under para (2)(a)

The advertisement requirement of sec 137(4) arises in respect of "an application for an extension…" and thus only extends to situations involving an extension of time sought under sec 137(2).

Upon granting an extension of time, a notice of such grant must be published (see reg 11.13(4).

D11.6.2 Directing Advertisement

Requests for an extension of time are not automatically advertised under s.137(4). Rather the Registrar will give consideration to the request to the point of being satisfied that grounds for the extension have been established so that, in the absence of any opposition being filed to the extension application, the extension could be granted. When the Registrar is prima facie satisfied that an extension could be granted, she will direct advertisement under s.137(4).

As to the degree of satisfaction needed, this will require the existence of at least "some evidence on which the {Registrar} could decide to grant the extension of time" even though there is other evidence on which the application could be refused. See Kimberly-Clark Corp v Proctor & Gamble Co, (1992) AIPC 90-869.


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In the event that the Registrar fails to be prima facie satisfied that an extension is justified, the Registrar will usually request the applicant to file further material in support of the request.

If the Registrar forms the view that an extension could not be granted, she may proceed to refuse the request under s.137(6) – without advertisement under s.137(4).

If the Registrar does not advertise the application, the application cannot be opposed and the Registrar must refuse to grant the application. This provision saves third parties from going to the expense of filing an opposition to the grant of an application that the Registrar does not intend to grant.

Note: If following the hearing the Registrar is not satisfied that the extension should be refused, the application will be advertised as usual under s.137(4). Note that any decision to advertise under s.134(4) cannot pre-empt the Registrar’s decision in any opposition that might be filed – and will therefore be of very limited scope.


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D11.7 Period of Extension to be Granted

D11.7.1 General Principles

The length of the period granted as an extension is to be determined from the circumstances of the action which led to the necessity for an extension. Needless to say, this period may not necessarily coincide with the period actually applied for.

The general rule is:

where error or omission, or circumstances beyond control are involved, the applicant for the extension is entitled to an extension period - net of administrative delays and the like - which equates to the period which would have been available had the error, omission etc. not occurred.

This rule applies equally to sec 137(1) as it does to sec 137(2). If this period is inadequate to meet the purpose of an extension under sec 137(2), the applicant has not, on the face of the application, justified the extension.

D11.7.2 Extensions for Completion of Examination

Most extension of time requests will relate to matters where the end of the period to be extended is known at the time the request is filed. However when an extension of time for the completion of examination is sought, the completion of the examination will not occur until after the extension has been granted, and then only after the examiner has considered the application. Additionally, if the examiner issues an adverse report there will be further time required for that report to be considered by the owner, a response filed, and the examiner consider that response.

Accordingly, when applying for an extension of time to complete examination the applicant will need to request an extension of time sufficient to allow for these actions to occur. Additionally, if the extension is for a period in excess of 3 months, an additional period needs to be included to cover the times associated with advertising the request under s.137(4), the one-month opposition period under reg 11.13(3), and the subsequent period to grant the extension. Usually an additional two months is sufficient for this purpose.

Note: If the extension is opposed under s.137(5) and is subsequently granted, the Registrar will deal with the period between the filing of the opposition and the conclusion of that opposition as being a ‘circumstance beyond control’.

D11.7.3 Renewal due before Design restored

Where:

• a design has ceased through failure to complete examination; and

• an extension of time is filed for the purposes of completing examination


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it can happen that the time for renewing the design (s.47) expires in the period after the request for an extension of time has been filed, but before the extension of time is granted.

In such circumstances, the owner might be reluctant to seek renewal of the design until the outcome of the extension of time application is known. However the period for renewal is set by reference to the filing date, and is not conditioned on whether or not the design is ceased. Consequently the owner will need to ensure that renewal is timely requested on an assumption that the Design will be restored – and not wait until it is restored. Failure to do this would be a new `error or omission' not covered by the section 137 request under consideration.

See G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 (6 August 2003), and International Business Machines Corporation v Total Peripherals [2002] APO 44.

If at the time the extension of time has been filed both the time for completing examination, and requesting renewal of the design, have expired, the extension of time request should seek an extension of both time limits.

See also D11.4.3.


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D11.8 Common Deficiencies

Common deficiencies that occur in applications for an extension of time under section 137 are:

• the request is for the incorrect period

• the request is in respect of the incorrect action - particularly in respect of filing an application covering excluded designs

• the request is in respect of a matter that cannot be extended (e.g. requests to file a first-instance application)

• the declaration is of low evidentiary value by relying upon hearsay ("I declare that the [foreign] associate has told me that his client has told him that….) - particularly in situations where there is no apparent reason (other than mere inconvenience) why the person having the direct knowledge of the circumstances cannot provide a declaration. This is to be contrasted with the situation where "person X, formerly of our employ" committed an error, where hearsay evidence may be quite appropriate.

• declarations that apparently provide 'selective' extracts of supporting documents whilst avoiding documents that may be less favorable to their case. (As a particular subset of this situation - declarations which refer or allude to documents as supporting their case, but fail to provide copies of them.)

• The request does not refer to all matters that need to be dealt with consequential on the request being granted – such as the time for requesting registration (for extensions of the priority period), and potentially the time for requesting an extension of term (for extensions of the time for completing examination).


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D11.9 Protection and Compensation Arrangements

Where a design ceases, there is a general public-interest expectation that the design has moved into the public domain and is available for all to freely use.

The primary effect of restoring a design is to re-establish the monopoly rights of the owner. However this is to the detriment to anyone who has taken definite steps to commercially use the design after the design had ceased. The detriment is not limited just to infringing products that a person might have sold or made – it also includes the cost of (for example) plant and equipment needed to manufacture the product, even if no product had been manufactured by the time of restoration.

Both the Designs Act 2003 and Designs Act 1906 include a mechanism to protect the interests of a person who has taken definite steps to commercially use a design after it had ceased. Conceptually, the protection is achieved by making the restoration of a Design something less than a full and complete restoration of all the owner’s rights. In particular, where a third party has taken definite steps to commercially use a design after it had ceased, that party accrues rights to use the design which are not lost to the design owner upon restoration.

It is important to recognize that the detriment to third parties arises from the mere fact of restoration. It is not dependent upon the reasons justifying the extension (including whether the restoration was indeed properly justified), nor upon whether the third party opposed the restoration or was successful in any such opposition - see Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3, at para 43.

The Designs Act 1906 provided an extension mechanism in S.27B that mirrored s.160 of the Patents Act 1952. [This arose from the Franki report (1973), which considered the prior practice of using regulation 51 to grant an extension to be unsatisfactory.] The mechanism included a protection and compensation provision by way of the grant of a licence upon application by the third party to the Registrar – with the design owner being able to oppose the grant of that license.

The Designs Act 2003 provides (in effect) a statutory licence requiring no application or other consideration before the Registrar. Any dispute about entitlement to the licence will likely only be dealt with in the context of infringement proceedings.

An entitlement to a licence (under either Act) is necessarily based on evidence. A third party being aware that a design has ceased should ensure there is an evidentiary basis supporting their entitlement to a licence in the event of the design being restored. While relevant evidence ought to be easy to gather at the relevant time, Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3 involved a situation where the evidence to support the licence was manifestly deficient.


Under the Designs Act 2003 the following issues arise:


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• S.139 of the Designs Act 2003 applies to any extension granted under s.137 of the Act – even if the design was filed or registered under the 1906 Act.

• The protection and compensation provisions apply if a design ceases to be in force because of a failure to do a relevant act – and is subsequently restored under s.138. They are not enabled as a result of an extension that is granted for a purpose that does not involve restoration of the design (for example, the period for filing a priority document – Reg 3.06(3));

• There is no minimum period of extension before the protection and compensation provisions apply – an extension of a single day is (in principle) sufficient to enliven the protection and compensation provision.

This is in distinction to the regime in the Designs Act 1906, where the extension had to be for a period in excess of 3 months.

• There is no express causative relationship between using the design commercially and knowledge of the fact that the design had ceased.

There is a question of whether a court would allow a person who has been infringing the design to rely upon their continued ‘infringement’ after the design had ceased as a basis to gain protection under s.139.


• S.27B(7) of the Designs Act 1906, and regulations 29, 29A and 29B of the former regulations continue to apply with respect to any extension that was granted under s.27B of the 1906 Act – see regulation 12.04(2). [Note: the Registrar considers regulation 12.04(2) maintains the operation of the former provision in a manner enabling the making of a new application for a licence. In this regard, see Ford Motor Company of Australia Ltd v Stephen Campbell of All Crash Parts Pty Ltd [2006] ADO 1, and Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3.]

• The extension must have been for a period in excess of 3 months in order for the protection and compensation provisions to be enabled.

• The license applicant must show a causative relationship between their availing themselves of the design, and knowledge of the fact that the designs had ceased. Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3.

• A request for a licence must be filed. There is no time limit for filling an application for a licence. The design owner has the right to oppose the application.

• If a licence is granted, the Registrar is responsible for setting the terms of that licence.

Relevant precedent for the grant of a licence by the registrar are:

• Harrison v Theo [1998] ADO 2 - license granted


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• Pacrim Trading Co Pty Ltd v Ford Motor Company of Australia Ltd. [2007] ADO 3 – license refused

A decision of relevance under the Patents Act 1990 (referred to in Harrison v Theo) is:

• HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12; 38 IPR 121 – license granted.


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Chapter 12 - Assignment etc of Designs; the Registrar

Table Of Contents D12 Assignment etc of Designs; the Registrar .......................................................... 1

D12.1 Introduction ..................................................................................................... 1

D12.1.1 Effect of Registration ............................................................................. 1

D12.1.2 Consequence of Not Registering .......................................................... 2

D12.1.3 Knowingly or Recklessly Making False Entries ..................................... 3

D12.2 Registering Assignments ................................................................................ 5

D12.2.1 Evidence of the Assignment or devolution ............................................ 5

D12.2.2 Particular issues with assignments or devolution .................................. 6

D12.3 Registering other interests ............................................................................ 10

D12.3.1 General issues .................................................................................... 10

D12.3.2 Licences ............................................................................................. 10

D12.3.3 Registration of other Interests ............................................................. 10

D12.4 Correction of the Register - Regulation 9.05 ................................................. 12

D12.4.1 Overview ............................................................................................. 12

D12.4.2 Clerical error or obvious mistake - Regulation 9.05(1) and (2)(a) ........ 12

D12.4.3 Adding a new Registered Owner......................................................... 13

D12.4.4 Adding a new Designer ....................................................................... 13

D12.4.5 Change the name or address - Regulation 9.05(2)(b) ......................... 14

D12.5 Rectification of the Register by a court .......................................................... 15

D12.6 Trusts, Bankruptcy, Insolvency ..................................................................... 16

D12.6.1 Trusts.................................................................................................. 16

D12.6.2 Bankruptcy .......................................................................................... 16

D12.6.3 Winding up of Companies ................................................................... 17


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D12 Assignment etc of Designs; the Registrar

D12.1 Introduction

The rights granted to a owner by a design are personal property and like other types of proprietary rights, are capable of assignment, licensing and of devolution by operation of law (Designs Act, sections 10 and 11). Moreover the Designs Act recognizes that proprietary rights may subsist in an application before grant and that these rights may be dealt with in the same way as other proprietary rights (see section 30). This part relates to recordal of changed rights and entitlements.

It should be noted that a court can issue an order for rectification of the Register in the case of:

• an omission of an entry from the Register

• an entry wrongly made in the Register

• an error or defect in an entry in the Register, or

• an entry wrongly existing in the Register (see s.120).

Consequently where the Registrar declines to make an amendment to, or entry in, the Register, the remedy for the relevant party is to seek rectification of the Register under s.120.

D12.1.1 Effect of Registration

A owner may deal with the design, subject only to the rights appearing on the Register (sec 12(1)). However, the Register is not definitive proof of ownership of rights. Rather, as is specified by sec 118(1), the Register is prima facie evidence of any particulars registered in it.

In Stack v Brisbane City Council [1999] FCA 1279 (15 September 1999), dealing with the corresponding provision in the Patents Act, the court stated:

"38 The underlying policy of the Act is to deal with ownership of a patent by registration of the original grant and by registration of any subsequent dealings in or with the patent in the Register. The scheme is to treat the registered proprietor as the owner of the patent subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as regards title to patents: Stack v the State of Queensland (1996) 68 FCR 247 at 251-2 citing with approval Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 at 133. Registration in the Register, while prima facie evidence of any particulars registered in it (s 195) and prima facie evidence of entitlement to ownership of the patent says nothing as to the validity of the patent.

39 Disputes as to ownership of patents and interests held in or over them are to be resolved primarily, but not exclusively, in proceedings for rectification of the


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Chapter 12 - Assignment etc of Designs the Registrar

Register between the rival claimants to the property interests; s 192. Such proceedings assume the continued existence of the patent, with patent rights being held by those properly entered in the Register."

The Designs Act does not set up a registration system that recognizes caveats – or any other procedure for notifying interested parties as a condition precedent to the registration of an interest. Neither does the Register provide a system of title by registration. Rather the Register is a system of Registration of interests of which the Registrar has been notified; upon the receipt of evidence sufficient to satisfy the Registrar of the existence of the interest that is to be registered, that interest must be entered in the Register.

Evidence cannot satisfy the Registrar of the existence of an interest if it is incomplete or misleading to the public. For example, if evidence in support of a request to register a license comprises a copy of a licensing agreement with the termination date blanked out, the license should not be registered; to record a license with a time limitation but no detail of the limitation would be misleading to the public.

Under sec 111(3) of the Designs Act, all documents filed in connection with the registration of prescribed particulars must be available for inspection at the Designs Office. Thus the Register gives a member of the public the means of access to the details of the registrations and details of any assignments, licenses, mortgages, etc.

D12.1.2 Consequence of Not Registering

Sec 12 of the Designs Act provides:

“(1) The registered owner of a registered design may, subject to any rights appearing in the Register to be vested in another person, deal with the registered owner’s interest in the design as absolute owner of it, and give good discharges for any consideration for any such dealing.

(2) However, subsection (1) does not protect a person who deals with the registered owner of a registered design otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the registered owner.

(3) Equities in relation to a registered design may be enforced against the registered owner except to the prejudice of a purchaser in good faith for value. “

“registered owner” is defined in s.14(1) as the person who “is entered in the Register as the registered owner of the design” at the relevant time. Thus the person registered as the registered owner may deal with the design as its absolute owner. If a prior assignment or interest has not been entered on the Register, the registered owner is still able to pass good title in, or grant a valid interest over the design – at the expense of the prior unregistered dealing.

Under equivalent provisions in the Patents Act, no attempt was made to register a prior assignment (from a trustee in bankruptcy) of patent 609383 for several years. When registration was eventually sought, the assignment could not be registered because a subsequent assignment from the registered proprietor had been registered in the mean-time. The resolution of such situations can only occur by way of an application under s.120 for rectification of the Register, where a court can


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determine the equitable interests in the design.

The equivalent of s.12 of the Designs Act (s.189 of the Patents Act) was discussed in Using Intellectual Property as a Security Australian Intellectual Property Journal Vol 7, page 135, Aug 1996, where it was argued:

‘... s.189(1) is also relevant to conflicts between two unregistered interests. Under s.189(1), the holder of a subsequently arising interest is entitled to deal with the patent as the “absolute owner” of the patent. Although absolute owner is not defined, it presumably means free of prior interests (unless, of course, they are registered). In consequence, the subsequently created interest will always prevail over the prior unregistered interest, even if the subsequent interest does not itself ever get registered. The result is a curious perversion of the usual priority rules. Under s.189(1), priorities between successive unregistered interests in patents are resolved in favour of the last to be created interest. As a result the only way to prevent an interest in a patent being defeated by a subsequent interest, registered or unregistered, is to register the interest promptly after creation.’

The failure to record an assignment (or any other registrable matter) is at the assignee’s peril. The only remedy available to a person who fails to record their interest, if that interest is affected by the subsequent registration of another interest, is to take action before the courts to establish that they indeed have an equitable interest, and seek to have the Register rectified; the Registrar is unable to otherwise take any action to record the earlier interest.

Note that recommendation 100 of the ALRC report recommended against the Registrar having the power to make such a rectification.

Other issues resulting from non-registration are:

• a document which has not been registered is not admissible in any proceedings in proof of the title to a design or to an interest in a design unless the court or tribunal otherwise directs or the proceedings are for an order for rectification or to enforce an equity (sec 119). A court has the power to admit an unregistered instrument (Martin Engineering Co v Matflo Engineering Pty Ltd (1987) AIPC 90-430)

• situations can arise where an equitable owner wishes to take infringement proceedings. As the right to take action for infringement belongs solely to the registered owner of the design, the equitable owner cannot bring the action in their name. However they can bring the action in the name of the registered owner if they provide the registered owner with appropriate indemnities (Stack v Brisbane City Council 35 IPR 296.)

D12.1.3 Knowingly or Recklessly Making False Entries

As a reflection of the importance of maintaining the integrity of the Register, sec 131 of the Designs Act provides:

“(1) A person commits an offence if: The person makes an entry, or causes as entry to be made, in the Register;


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and The person knows that, or is reckless as to whether, the entry is false.

Maximum penalty: Imprisonment for 12 months

“(2) A person commits an offence if: The person tenders a document in evidence; and The person knows that, or is reckless as to whether, the document falsely purports to be a copy of or extract from an entry in the Register.

Maximum penalty: Imprisonment for 12 months

Consequently entries in the Register should only be made on the basis of appropriate consideration and justification.

Recklessly has been held to ‘mean something more than mere negligence or inadvertence. .... means deliberately running an unjustifiable risk’ Reed (Alber E) & Co Ltd v London and Rochester Trading Co Ltd [1954] 2 Lloyd’s Rep 463. ‘Knowingly’ may refer either to an intentional untruth, or wrong fact. It probably requires a mental element, not merely that the facts are untrue. Sec 131 is a penal provision of the Act. Where such a situation exists, sec 131 does not provide a mechanism for rectification of the Register. However the facts that would support an action under s.131 would almost certainly support a separate application for rectification of the Register.

Note that this provision is NOT limited to employees of the Designs office. It covers actions by persons generally (such as someone providing the Registrar with false or misleading information to a support a request to make an entry in the Register).


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D12.2 Registering Assignments

The Designs Act provides an express mechanism to record assignments – s.114 and regulation 9.03. A request to record an assignment must be in the approved form, and be accompanied by satisfactory evidence.

D12.2.1 Evidence of the Assignment or devolution

For the assignment to be registered, the request must be accompanied by ‘satisfactory evidence’ of the assignment or interest by devolution (reg 9.03(2)(b)). That is, evidence whereby the Registrar can be reasonably satisfied of the existence of the assignment or devolution.

An assignment must be in writing, signed by, or on behalf of the assignor and assignee (sec 14(1), (2)). There is no basis to waive this requirement merely because it is not a requirement in the country in which the assignment was executed. It must be in writing; a purported oral assignment is not effective.

Desirably, both signatures are on the same assignment document. However identical copies of the assignment document, each respectively signed by one party only, is acceptable – providing both copies (and hence both signatures) are provided in evidence. There is no requirement that the documents bear the same date, although a large difference in dates may raise questions about whether the earlier signaturee has withdrawn their agreement in the interim.

No particular form of words is required to effect an assignment, so long as the words used show a clear intention that the assignee is to have the benefit of the chose in action.

Illustrative of material that may provide evidence of the existence of the assignment or devolution are:

• a deed of assignment signed by both the assignee and assignor (whether or not ‘commercial’ details are included in the deed)

• deed of sale

• letter from the Registrar of a Court, or order of a Court dealing with appointment of receiver, and various supporting evidence in bankruptcy and liquidation actions.)

• court order providing authority for transfer of title

• authenticated copy of the grant of Probate, or Letters of Administration (note that the transfer cannot be to "the estate of X", and cannot be to the beneficiary of a will before probate has been granted.)

The assignment or devolution must clearly relate to the particular Design. Usually this would be by way of an application or registration number, but it can be by other means – providing the assignment unambiguously relates to the design in question. Where the reference is to a design which had not been applied for at the date of the assignment, the Registrar will need to be satisfied that the design in question fell within the ambit of the assignment.


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Where the assignee has changed their name between the date of assignment and registration, the Registrar will require appropriate evidence of the name change sufficient to establish that the assignment is being recorded to the correct person.

Frequently an assignment will occur as part of a larger commercial dealing between the parties. The Registrar does not require a copy of an assignment that includes other commercial dealings between the parties; all that is required is a document signed by the assignee and assignor that makes clear that the specified design has been assigned (although the assignee can file a copy of a ‘commercial’ deed of assignment as proof if they want to). Because documents filed pursuant to sec 114 are available for inspection under sec 111(3), the assignee may opt to file a redacted copy of the assignment document – that is, the document with the confidential portions blanked out and a statement that the document is a true copy of the original and that the blanked out portions contain {financial data} only. However, portions relating to the assignment per se cannot be blanked out because the document would then be incomplete and misleading.

Documents supplied are retained by the Registrar. Where the requestor supplies an original of the document, the Registrar will make a copy of the document for retention (suitably annotated) and return the original. Where a copy of the document is supplied, there should be an accompanying statement that it is a copy of the original document. While the Registrar will usually accept such statements at face value, in appropriate circumstances this may be insufficient – in which case the Registrar may require a certified copy of, or the actual, deed of assignment.

D12.2.2 Particular issues with assignments or devolution

D12.2.2.1 Ceased Designs

The requirement to record particulars in the Register is limited to registered designs - that is, designs that have not ceased or expired. [s.111(2), s.48]. Thus generally the Register will not make any entries in the Register in respect of ceased designs.

However, if the title or interest in the design was created before the design ceased but the request to record the interest is not made until after the design ceases, the Registrar will nevertheless record that interest in the Register.

If a change in title or interest occurs after cessation but before restoration under s.117, the Registrar will not record any change until the Design is restored.

(Note the judgements in:

• Re Usines de Melle's Patent (1954) 91 CLR 42

• Re Sanofi's Petition for Extension of Term (1981) 51 AOJP 2142.)

D12.2.2.2 Errors in the assignment document

If the deed is defective, it is possible to file a statutory declaration by all the parties to the assignment as to what they had intended by the deed. It may be possible to obtain information about what the deed should have said (ie. what the intention of the parties was) from other sources, but it must be sufficient to achieve a reasonable satisfaction of the entitlement of the person. In the case Westpac Banking Corp v


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Dawson (1990) 8 ACLC 681 it was held that an accidental mistake in the name of a party to a contract does not invalidate the contract.

D12.2.2.3 Assignee must be a Person

Only a person may be registered as the owner of a design (s.13). Where a person is not a natural person, there should be some indication that the body is incorporated (since the Register affords prima facie evidence of the existence of a corporation: Purex Corporation Ltd v Vanguard Trading Co [1965] 112 CLR 532 at 534).

A company which has been deregistered is not a person. Consequently an assignment to such a company cannot be registered. However an assignment to a company in receivership or liquidation can be recorded, as such companies continue to exist unless or until they are deregistered.

Where a document is executed for a company, it needs to be apparent that the person signing has appropriate authority. For Australian companies, presence of the company seal will typically satisfy that purpose.

D12.2.2.4 Mergers vis à vis Assignments

Where a party requests that a change of owner, it may not be readily apparent whether the change is a mere change of name, or whether it is an assignment – and consequently which of sec 28 or sec 30 (for applicants), or regulation 9.05(2)(b) or s.114(3) (for registered designs), apply. For Australian corporations, the presence or absence of a change in the ACN/ABN number will usually be determinative [if the ACN number changes, the company has changed – so the transaction must be an assignment]. However the situation for foreign corporations will generally be incapable of easy determination.

For applications, it is not necessary to determine which of s.28 or 30 apply. As long as the change of ownership is clearly established and capable of being effected by the provision used by the requestor, the change will be given effect under that provision.

For registered designs, there is a procedural difference between s.114(3) and reg 9.05(2)(b). For assignments, the Registrar is required to notify any other registered owner (that is, a co-owner not party to the request) and allow them 1 month [reg 9.03(1)] to indicate a lack of consent to the assignment. This notification is not required for a name change under Reg 9.05 – although it is permitted under 9.05(3). Accordingly as long as the change is clearly justified and capable of being effected by the provision used by the requestor, the change will be given effect under that provision – except that:

• if reg 9.05 is used, the Registrar will notify any co-owners under reg 9.05(3) and allow them 1 month to indicate any lack of consent; and

• the change in entitlement is simply recorded as a "change of name/assignment".

D12.2.2.5 Time-limited assignments, partial assignments


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A design may be assigned for a limited period of time, or for only part of Australia (sec 11(3)).

If the assignment is for a period of time with a specified date for its conclusion, the Register will record that period. If there is no specified date for the end of the period, the Register will not record the conclusion of the assignment unless the relevant parties makes a request to so record.

If the assignment is only for part of Australia, the Register will record that region.

If a purported assignment is for only part of the Exclusive rights under s.10, the effect is to create a license. In such cases the Register will record the relevant details as an ‘assignment/license’.

D12.2.2.6 Entitlement of Later Registered Owner

The entitlement of an assignee is determined by reference to the entitlement of the original registered owner under sec 13. [see s.93(3)(b) and (c)]. Consequently where at the time of filing the applicant did not have full entitlement to the design, this must be rectified before registration.

Any request to record an assignment must be treated at face value. Reconsideration of the entitlement of the owner of record is not appropriate when deciding whether to register a transfer (see George Stack v State of Queensland [1996] 739 FCA 1).

If a design application is assigned shortly before registration - such that there has been no time to request a recording of the assignment before grant (which is an inevitable situation) - the design registration is not invalid for being registered to the wrong person. In such situations the question to be asked is whether the registered owner at the date of registration was fully entitled to the design at the date the assignment was executed. If so, the recording of an assignment after the design has been registered is no more than a conversion of the equitable interest established by the assignment to a legal interest.

D12.2.2.7 Assignment when there is a Registered Interest

It will sometimes happen that an owner will assign a design in respect of which there is a registered interest, such as a license or a mortgage.

Provided the evidence of the assignment is sufficient to satisfy the Registrar of the entitlement of the assignee, the assignment is to be recorded. Prior to recording an assignment, the Registrar is only required to notify the registered owners of the design [s.114(3)]. Upon registration, the Registrar will send the licensee or mortgagee a letter advising them of the assignment.

D12.2.2.8 Assignment by a Co-owner

A co-owner of a registered design cannot assign an interest in the design without the consent of the other co-owners (sec 14(2)(c)). Before the Registrar will record an assignment from a co-owner, the other co-owners must be notified by the Registrar [s.114(3)], who then have one month to indicate a lack of consent. That notification will normally be sent to the address for service; where that address is the personal This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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address of the co-owner seeking to assign their interest, the co-owner will need to satisfy the Registrar that the correspondence has been forwarded to all other co-owners.

Where there are proceedings pending under s.51, the person making the s.51 application is not per se a co-owner. That is, no consent is required from a s.51 requestor. In this regard, it should be noted that a post-registration assignment is incapable of removing the ground of revocation of s.93(3)(b), or of defeating a claim under s.51.

D12.2.2.9 Assignment by a Minor/Infant

It appears to be accepted that an infant or minor (i.e., a person under the age of 18 years) can own intellectual property and assign it: see re D'Ambigou, Andrews v Andrews (1880) 15 Ch D 222 and Chaplin v Lesley Frewin (Publishers) Ltd (1966) Ch 71.

D12.2.2.10 Retrospective assignments, Constructive trusts

Assignments sometimes purport to operate retrospectively – for a variety of commercial or strategic reasons. This was discussed in Black & Decker v GMCA (No 2) [2008] FCA 504, where it was stated:

it is not possible for {two entities} by internal arrangements to shift between themselves entitlements under the statute as against strangers. The … Deed does not operate retrospectively.

That is, while two parties might come to an agreement that has retrospective effect between themselves, such an agreement cannot give rise to retrospectivity with respect to the rights or interests of third parties. Accordingly deeds of assignment that purport to operate retrospectively (include deeds of confirmation purporting to merely confirm what had been previously agreed between the parties) should not be recorded in so far as they assert an effect prior to the date of execution of the assignment in accordance with s.11(1) and (2) of the Designs Act [that is, in writing, and signed by or on behalf of the various parties.]

If a person asserts the existence of a Constructive Trust, it may be noted that in The University of Sydney v ResMed Ltd (No 2) [2008] FCA 1969, Lindgren J observed:

64. My present view is that there is no property in an application for a patent and so a constructive trust could not subsist over such an application…

Prima facie this is of equal relevance an application for a design.


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D12.3 Registering other interests

D12.3.1 General issues

Regulation 9.01(b) requires the Registrar to record ‘the name of each other person who has an interest in the Design’. That is, persons other than the owner (and hence any assignee).

The regulations do not set out the requirements for persons requesting the making of such entries. However given s.131 (see D12.1.3), it is clear that the Registrar should only make an entry on the basis of being reasonably satisfied of the existence of the relevant interest. Note also the requirement under s.67(2) (examination) and regulation 4.11 (surrender) to notify all persons entered on the Register as having an interest in the Design. Consequently, section D12.2.1 (Evidence of the Assignment or devolution) applies equally to the registration of other interests.

In recording an interest pursuant to reg 9.01(b), the Registrar is merely required to record the name of the person that has that interest. Consequently the nature of the instrument need not be identified in detail. All that is required is a clear identification of the particular interest - eg. "license agreement dated ...", and of the person having that interest. Note that while the Register only records the name of the person, the supporting documentation would be expected to provide other information – such as an address – that identifies the person holding an interest in the design.]

Typical of interests that may be registered are licenses and mortgages. Purported interests that are not registrable include the right of lien provided by s.142.

D12.3.2 Licences

Broadly speaking, an owner can grant licenses to any number of people, grant a sole license (allowing the owner to ‘use’ the design), or an exclusive license (where the owner cannot ‘use’ the design. However the Designs Act does not distinguish between these types of licenses. Accordingly the Register will merely record the existence of a license (and any limitations such as term or region); it will not record the type of license.

D12.3.3 Registration of other Interests

There is no problem with registering legal mortgages, licenses and proprietorships, but some other ‘interests’ (such as equitable interests) present a problem. Are they "an interest in a design", or notice of a trust? Note that a notice of Trust is ‘not receivable’ by the Registrar (see D12.6) and must not be registered.

The available case law can be summarized as follows:

Stewart v Casey 9 RPC 9

"you must draw a distinction between agreements and other things which do affect the proprietorship and simple notices of trust ... notice of trust is not to be put on, documents which affect the proprietorship, whether by creating trusts or otherwise, are not to be excluded" (at page 11)


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"equitable assignments for a (design), or of a share in a (design), may be entered on the register" (at page 13)

"The rights of proprietorship are purely legal rights; but any other rights - any right that may appear on the register - must therefore be, if not a legal right to proprietorship, either a legal right of some lesser description or an equitable right, and, therefore, it seems to me to be plain that the legislature contemplated the prescription by the Rules of a power to enter on the register, rights which are not rights of proprietorship, including equitable rights." (at page 16)

"it is impossible to say that the fact that this equitable assignment may create a trust prevents it from creating an interest within the meaning of the word used in the Rule or a right within the meaning of the 87th Section which would preclude its being put on the register." (at page 16)

Haslett v Hutchinson 8 RPC 457

"unless the plaintiffs are in a position to obtain specific performance, they are not a shadow of interest, legal or equitable" (at page 466)

The distinction seems to be between a document which deals with the design, and in doing so creates a trust, and a document which simply declares the existence of a trust (eg. a declaration of trust). This seems to be the approach adopted in Kakkar v Szelke (1989) 15 FSR 225.


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D12.4 Correction of the Register - Regulation 9.05

D12.4.1 Overview

This provision allow for amendment of an entry in the Register to correct a clerical error or obvious mistake, and to correct a name or address that has been changed.

This regulation is limited to clerical errors and obvious mistakes. More substantive amendments can only occur by way of s.28 (pre-registration), s.66 (during examination), or a court order for rectification of the Register (sec 120). Amendments under s.28 and 66 are discussed in D10.

D12.4.2 Clerical error or obvious mistake - Regulation 9.05(1) and (2)(a)

A clerical error is an error that arises in the process of transcription, whereby something other than what was intended is entered on the Register. Where the error is said to have occurred in documents submitted to the Registrar, the owner will need to provide relevant evidence to establish the intention at the time the documents were prepared, with some indication as to why the submitted documents did not reflect that intention. The evidence needs to clearly demonstrate the existence of the intention – and not a subsequent change of mind.

An obvious mistake is an error for which both the existence, and the correction, is obvious on the face of the Register. If it is necessary to analyze other documents to recognize the existence of a mistake, or to ascertain the correction, then the mistake is not an obvious mistake and cannot be rectified under this regulation.

Regulation 9.05(1) is used when there has been no error on the part of the owner, but rather an error by the office, e.g. where information entered on the Register is incorrectly extracted from the application. When the error is solely the responsibility of the patentee, then reg 9.05(2) applies.

Subregulation (3) allows the Registrar to seek comments from some or all persons entered on the Register as having an interest in the design. The Registrar will not do this as a matter of course, but will if the nature of the amendment sought might affect the interest of such persons.

Subregulation (4) requires the Registrar to advertise the amendment for opposition purposes if the amendment would materially alter the meaning or scope of the entry in the register. Generally speaking, name and address changes, and corrections of simple typographical errors, would not materially alter the meaning or scope of the entry in the Register. In contrast, any correction that could impinge upon the scope or validity of the design (e.g. changing the number or date of a priority application) inherently materially alters the meaning or scope of the entry in the Register and must be advertised. In this regard, submissions from the owner that the amendment need not be advertised should be given little weight per se; indeed, the mere fact that an owner does not want the amendment advertised will typically be a strong indication that the amendment does in fact alter the meaning or scope of the entry in some material manner – and thus must be advertised. This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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D12.4.3 Adding a new Registered Owner

In principle, a request can be made under regulation 9.05(2) to insert the name of a new owner, asserting that a person's name was omitted as a result of a clerical error – on the basis that it was always the intention to include that person as the owner.

Any request to amend the Register to insert new owners on the basis of an alleged clerical error must be supported by clear and convincing evidence of the existence of that clerical error. That evidence would need to show that the individual concerned was known at the relevant time, and evidence the clerical error that resulted in that individual’s name being omitted. Mere assertions (even in declarations) such as “it was always the intention...” provide insufficient basis to be satisfied of the existence of a relevant clerical error. Where there is inadequate evidence of the existence of a clerical error, the examiner should object that the existence of a clerical error has not been established, and draw the owner’s attention to the mechanism of sec 120 of the Act. Note that the likely effect of such a correction is to convert a wholly invalid design into a valid design, and accordingly the Registrar will only make such a correction on the basis of clear and convincing evidence.

It should be noted that if the Registrar amends the owner under Reg 9.05(2) on the basis of a clerical error, it is not certain that this will overcome the invalidity grounds of s.93(3)(b) and (c).

Situations can arise where the parties associated with the design realize after its registration that another person (not being a creator of the design) should desirably have been included as co-applicant as a part-assignee. Such situations are properly dealt with by way of a post-grant recording of an assignment of a part interest in the design; amendment of the Register and Patent on the basis of a clerical error is not appropriate.

Requests filed by persons other than the owner should be treated with caution, and only be acted upon after informing the registered owner under r. 9.05(3).

D12.4.4 Adding a new Designer

Situations also arise where after registration the owner wishes to identify further designers. This typically arises where the owner is a large company and has difficulty in properly identifying all designers - particularly if the design is the result of a major team project. In situations where the added designers are employees of the applicant, the addition of extra designers will not normally raise any concerns regarding s.93(3) - usually the applicant company will be the assignee of the design from the extra designers as a result of their employment, and there will be no change in the name of the registered owner. If, however, there is a request to add the name of the extra designer as an extra owner, the ground of s.93(3)(c) is applicable. In this situation, submissions to the effect that the existence of the extra creator/owner was not known prior to the completion of a “due diligence” investigation does not establish the existence of a relevant clerical error that would justify changing the owner to include the extra owner. [see D12.3.3]

Requests filed by persons other than the owner should be treated with caution, and only be acted upon after informing the registered owner under r. 9.05(3).


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D12.4.5 Change the name or address - Regulation 9.05(2)(b)

Where there is a change in the name or address of the owner, the Register is amended under this provision to record the change. As such amendments do not change the identity of the owner, the Registrar would not normally notify persons entered on the register as having an interest, nor advertise the amendment for opposition purposes.

Any changes in the person of the owner must be dealt with as an assignment under s.114. In situations where it is not clear whether the situation is an assignment or a name change, the Registrar will process the request as set out in para D12.2.2.4 (Mergers vis à vis Assignments).


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D12.5 Rectification of the Register by a court

Under s.120 a person may apply to a court for orders requiring the Register to be rectified. The grounds under s.120 are different from the grounds of revocation under s.93, and can be invoked in a range of miscellaneous circumstances.

The Registrar would not normally be involved in the court proceedings, even though she has a right of appearance [s.120(3)]. However a party might seek the Registrar’s advice on the form of orders that might be made by the court – to ensure the orders can be given practical effect. Such requests are generally to be encouraged – but they must be referred to the Hearings section for action.

Under s.120(4), the Court is required to give a copy of the order to the Registrar – who must give effect to that order. However that giving of effect must necessarily be cognizant of relevant court procedures – in particular, appeals, and stays. Practical issues that can arise are:

• A party (rather than the Court Registrar) serves a copy of the order on the Registrar. Generally speaking, if it is clear that the document served on the Registrar is genuine (and bears the Court seal), the appeal period has expired, and no appeal has been filed, the Registrar will act on the court orders.

• A party ‘demands’ the orders be implemented ‘immediately’. This will typically arise when a successful party wants orders revoking a design to be implemented before the design owner files an appeal against the decision. In such instances the Registrar will deal with the matter in a manner that is open and transparent to all parties to the court proceedings. It should be noted that:

• The Registrar is not obligated to give instantaneous effect to the court orders (unless the court orders expressly require such immediacy);

• The Registrar has no entitlement or obligation to wait until the end of the appeal period to ascertain whether an appeal is filed, before giving effect to the court orders;

• The Registrar is entitled to notify the other party of the receipt of the orders, and of her intention to give effect unless a Stay application is made within a short period of time – and will generally do so;

• In any event, if the orders were not provided to the Designs Registrar by the Court, the Designs Registrar is entitled to take the position that she will not take any action until the court has given her a copy of the orders in accordance with s.120(4).

Any situations where such issues arise are to be referred to the Hearings section immediately.


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D12.6 Trusts, Bankruptcy, Insolvency

D12.6.1 Trusts

Sec 117 of the Act provides that:

“Notice of a trust, whether express, implied or constructive, must not be received by the Registrar or entered in the Register.”

A trust relationship arises where a person has property or rights which they hold or are bound to exercise for or on behalf of another for the accomplishment of some particular purpose.

The requirement that a trust must not be received means no more than the Registrar is precluded from ‘receiving’ the trust in the same way as a court would ‘not receive’ inadmissible evidence.

That is, a notice of trust can be placed before the Registrar, but the Registrar can not act upon such a notice to alter the registered particulars. Nor is the Registrar obliged to consult or seek the approval of beneficiaries if a trustee who is registered, assigns or takes other actions in regard to those rights. The requirement that a notice of trust must not be registered does not exclude registration of a trustee if the trustee holds the legal interest in the patent rights. Sec 117 merely prevents notification of the trust or details of the trust being recorded. That is, sec 117 permits trustees who have good title to the legal interest in the rights to be registered, the Registrar being obliged to record the details of those prima facie so entitled without noting the trust relationship.

Thus, where a request is made to record a trustee in the Register, the trustee can be recorded so long as the usual requirement for supporting evidence has been met. The Register entry should make no reference to the person's status as trustee. Any provisions in a deed of assignment setting out obligations as between the trustee and the beneficiaries of that trust are not relevant and must not be recorded in the Register.

D12.6.2 Bankruptcy

In the case of a bankrupt, the rights which are the personal property of the bankrupt pass absolutely to their registered trustee or the Official Trustee (s.58 of the Bankruptcy Act) - but such vesting of design rights are conditional upon the interest being registered in the Register of Designs. Where the Registrar receives a request to record a trustee in bankruptcy in the Register, the trustee is to be recorded provided there is relevant proof - such as a sequestration notice or other document or order declaring the current holder of design rights bankrupt. As there will be no deed of assignment, the entry should refer to the sequestration order or other document as giving rise to the trustee's entitlement.

Note: The assignment of a bankrupt’s property to his trustees in bankruptcy (or whoever is the representative of his creditors) under the law of a country which has jurisdiction over his person operates as an assignment of the movables of the bankrupt wherever locally situate, but only to the extent where the assignment is


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made in accordance with the laws of the situ of the movables (Radich v Bank of New Zealand (1993) 45 FCR 101).

The effect of bankruptcy on the ownership of a patent was discussed by the Administrative Appeals Tribunal in the matter of Reilly v Commissioner of Patents 36 IPR 314. The discussion at paragraphs 29 to 38 of that decision covers matters directly relevant to the Designs Act – and should be referred to when dealing with bankruptcy issues.

D12.6.3 Winding up of Companies

Companies can be wound up under a variety of circumstances, ranging from insolvency to a simple voluntary winding up.

When a company is insolvent, a liquidator will be involved with the winding up. In this situation, liabilities will exceed assets - so that after the sale of all assets to meet liabilities there is nothing remaining. The liquidator has full powers to deal with the assets of the company, including assigning of any design rights of the company. A Company may be voluntarily wound up. In this situation the assets will usually be greater than the liabilities, such that there will be a distribution of assets following the payment of all outstanding liabilities.

The distribution of assets is done as part of the process of winding up a company, which should occur before the company is deregistered. If a company has been deregistered before the assets have been distributed, then generally the company will need to be reconstituted so that the assets can be distributed in accordance with law. Assertions by 'former directors' of the company that the rights in a design belong to them following deregistration are inadequate; there needs to be a formal assignment from the company to themselves - and this cannot occur after the company has been deregistered. If an assignment is executed after deregistration, it will need to be re-done once reinstatement occurs (since entry on our Register does not establish validity of title). However, in some circumstances it is possible for ASIC to execute the assignment on the company's behalf.


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Chapter 13 - Ownership Disputes

Table Of Contents D13 Ownership Disputes ........................................................................................... 1

D13.1 Overview of ownership disputes ..................................................................... 1

D13.2 S.29 disputes .................................................................................................. 2

D13.2.1 s.29 disputes – between co-applicants ................................................. 2

D13.2.2 s.29 Disputes – another person claiming entitlement ........................... 3

D13.2.3 S.29 Disputes where some or all of the designs have been Registered or published ....................................................................................................... 5

D13.3 S.30 Disputes associated with recording assignments .................................... 7

D13.4 S.52 Revocation relating to Entitled Persons .................................................. 8

D13.4.1 Overview .............................................................................................. 8

D13.4.2 Process for handling s.52 requests ...................................................... 8

D13.4.3 Typical disputes ................................................................................. 13

D13.5 Application by Entitled persons after revocation ............................................ 16


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D13 Ownership Disputes

D13.1 Overview of ownership disputes

The designs Act provides 3 mechanisms for dealing with disputes relating to the ownership of a design, before the Designs Office.

While the ALRC report envisaged that disputes over ownership should be dealt with in examination {see paras 7.19 to 7.21}, the 2003 Act has substantive provisions to deal with such disputes. These provisions are similar to provisions in the Patents Act 1990.

S. 29 relates to disputes about how an application will proceed. The outcome of a determination under s.29 is a direction that applies with respect to that particular application – it does not result in a new design application being filed.

s.52 is a provision that allows a third party to assert that they are an entitled person in relation to the design (whether or not some or all of the owners of record are entitled persons). The outcome of the proceedings is revocation of the design, with a declaration identifying the person(s) the Registrar is satisfied is the proper owner. When a declaration is made, the people identified in the declaration may file a new application for a Design pursuant to s.54. the priority date of the design in that application is the same as it had in the application in which it was first disclosed.

s. 30 is a mechanism for recording an assignment prior to registration, which usually is uncontroversial and proceeds on the basis of a copy of the assignment document being filed. Under the 1906 Act, a dispute over the validity of a pre-registration assignment could only arise before the Registrar in the context of recording an alleged assignment – as in Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 (6 January 2005). However under the 2003 Act any such dispute would be dealt with under s.29.

Most ownership disputes are an inter partes matter that is resolved by way of evidence and a hearing. The legal issues involved can be quite diverse and complex, and it is usually highly desirable for a party to such proceedings to have legal advice. Furthermore, parties need to be aware that they are exposed to an award of costs against them if they are unsuccessful. An award of costs is enforceable as a debt [s.128], and if the other party has legal representation an award of costs in that party’s favour could be many thousands of dollars.

An unrepresented person has a particular difficulty if they invoke s.29 to assert they are an entitled person in relation to a design application which hasn’t been published. This is discussed in D13.2.2 below.


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D13.2 S.29 disputes

A dispute under s.29 can only arise prior to Registration. They are fundamentally of two types:

• There are joint applicants for the design, and they cannot agree on whether, or in what manner the application should proceed.

• There is a third party who asserts that they should be either a joint applicant, or the applicant for the Design. [see s.29(3)(b)].

D13.2.1 s.29 disputes – between co-applicants

Disputes between co-applicants are expected to be exceedingly rare – given the limited prosecution issues that can arise pre-registration. The following are examples of dispute situations that have occurred under the Patents Act [mainly under the Patents Act 1952] which may provide guidance.

• a joint applicant refusing to sign a required document:

• Application by Willems, Fritz, et al 21 IPR 569

• Stephenson v Donner 24 IPR 108, (1992) AIPC 90-888

• a person requesting the application proceed in their name only:

• Carroll v Harper 1 IPR 537 - where one party did not fulfil its contractual obligations

• Tribe v Ranken 1 IPR 561 - where application erroneously include the name of a second person.

• Milward-Bason and Burgess (1988) AIPC 90-475 - involving breach of agreement, unauthorised assignment, and non-cooperation and inaction in instigating infringement actions and marketing.

Three decisions appearing in the RPC's, which may be useful to persons involved in sec 29 actions are:

• Novocretes Ltd.'s Application 43 RPC 171

• Lanfranconi's Applications 53 RPC 317

• R&S Trailers Ltd.'s Application 60 RPC 7

The result of the s.29 procedure in these circumstances is typically a determination of the manner in which the application may proceed. In instances where the conduct of a party is designed to frustrate the prosecution of the application by the other party, a typical direction has been to delete (effectively or actually) that party as an applicant. In circumstances where the conduct of both parties has been questionable, the parties have been required to indicate their agreement on all future documents to be filed – with it being noted that the application would inevitably lapse unless the applicants could reach agreement between themselves. [Application by O’Neill and StGeorge 30 IPR 637]


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With these disputes, the nature of the evidence required by the Registrar to resolve the dispute will be highly dependant upon the facts of the case. In some circumstances the parties may be quite cooperative in placing relevant material before the Registrar. In others one party may deliberately avoid communication with the Registrar. Thus the Registrar has no ‘normal’ process for handling the evidentiary processes – apart from ensuring that each party has a reasonable opportunity to both put their case, and to respond to the case of the other party.

D13.2.2 s.29 Disputes – another person claiming entitlement

S.29 can be used by a person asserting that they are an entitled person with respect to a design in the application. The potential result of a determination is a change in the applicants of the application.

Note: a s.29 determination does not lead to a new design application – just a change in the applicants.

Subject to the following, the practice and procedure for dealing with these disputes is the same as for disputes under s.52 – See D13.4 below.

There is a particular difficulty with applications under s.29, in that the design application is necessarily not OPI. Consequently in most situations the person making the request is doing so in ignorance of the actual content of the design application – acting (typically) on a strong suspicion based on past dealings between the two parties. But an argument about entitlement cannot be easily debated in ignorance of the designs actually disclosed in the application.

S.61 provides that the Registrar may direct inspection of documents that have not been published. However the Registrar will only do so in circumstances where the confidentiality of the documents are maintained – and in particular that they are not made available to any person who might obtain a commercial advantage as a result of knowledge of the content [such as a person involved in design creation.]

In practical effect, this means that the Registrar will only release such documents for inspection by legal advisers (such as a barrister, solicitor or patent attorney) following the making of a written undertaking not to disclose the documents to any other person. The Registrar would only contemplate release to other agents a party might engage if satisfied that the person concerned would be subject to serious professional consequences if they breached the undertaking.

The net result of this is that an unrepresented person will have serious difficulties in being able to successfully prosecute a s.29 request.

D13.2.2.1 Procedures for allowing inspection of an unpublished design application.

Precedent

Words equivalent to s.66(1)(b) were judicially interpreted in Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), where Fullagar J.


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said:

"In s.55(1)(e) I consider that the words "before the Commissioner or in a legal proceeding" govern not only the preceding word "produced" but also the preceding word "inspected". The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection "in a legal proceeding". It may be - and it is unnecessary to decide - that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, 'live' legal proceedings."

- but note that this quote refers largely to the powers of a Court.

A request under the equivalent provisions of the Patents Act 1952, and how it was dealt with, is referred to in Magee v Farrell (1986) AIPC 90-296.

Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc, (1998) AIPC 91-434.

If there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality. An example of a draft undertaking is given below - although the appropriateness of the text must be assessed on the merits of each individual case.

In the matter of:

Design application no:

in the name of and a request under section s.29 by

I ……………………………………………….. <name> apply to the Registrar for access to inspect certain documents under section 61(1)(b) of the Designs Act 2003.

These documents are: .

I undertake that I will treat those documents and the information contained therein as confidential and will not disclose the information contained therein to any other person until I am satisfied that they have been granted access by the Registrar to inspect that material. I also undertake to only use the information contained in the documents for the purposes of the above request under section


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s.29.

Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert. The other party might be granted restricted access to documents in the file other than the representations if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality. (See Davies v Eli Lilly & Co. (1987) 1 All ER 801). Access will not be granted without the design applicant being given an opportunity to object to that access, and/or comment on the terms of any confidentiality undertaking.

Note: While the other party might be given access to general correspondence, the confidentiality issue will usually prevent them being given access to the representations, or correspondence referring to the content of the representations.

Normally inspection can take place at the Designs Office in Canberra.

Importantly, the restrictions under s.61 relate to actions of the Registrar. If the parties can agree, they can exchange documents between themselves without involving the Registrar.

Where the Registrar has concerns about releasing the documents and the parties cannot agree to access, it may be appropriate to follow the process of Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088. In such cases, access to an unpublished application may be on the following basis:

• the person seeking access must provide the Registrar with a representation of what they allege their design to be

• an examiner, or agreed third party, will compare the representation of the alleged design with the designs in the application, and report whether the alleged design is disclosed in the application

• upon appropriate undertakings as regard confidentiality being made, the report will be given to the person seeking access, and the design applicant (or their respective legal representatives).

See Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088.

D13.2.3 S.29 Disputes where some or all of the designs have been Registered or published

A determination under s.29 must relate either to identifying the entitled persons, or the manner in which the application can proceed. However the Registrar will decline making a determination where there is no purpose to be served by the determination.

Where the all the designs in an application have either been published under s.57 or registered, there are no further proceedings that can occur with respect to the application. Accordingly the Registrar will not make any determination under s.29 in respect of such designs in the absence of compelling reasons to do so.

Where some of the Designs have been registered or published, but others not, it may be possible for there to be a meaningful determination with respect to those designs


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that have not been registered or published. In this regard, it should be noted that if the application has lapsed with respect to those other designs, the application might be capable of restoration under s.137. In such cases a request under s.137 would need to be on file – and the Registrar will determine on the facts of the case whether the s.137 request is determined in parallel with, or prior to, the s.29 dispute.


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D13.3 S.30 Disputes associated with recording assignments

S.30 of the Act provides a mechanism for recording an assignment or devolution by way of agreement or operation of law, prior to the registration of the design.

The issues associated with recording an assignment or other devolution of title under s.30 are the same as for recording assignments or devolution after registration. These are discussed in D12.2 of this manual. While Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 (6 January 2005) was dealt with under the equivalent provision of the 1906 Act, this was because there was no equivalent to s.29 in that Act.

Where a dispute over the validity of an assignment arises in the context of a s.30 request, the Registrar will deal with the issue under s.29 of the Act.


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D13.4 S.52 Revocation relating to Entitled Persons

D13.4.1 Overview

S.52 is a post-Registration mechanism for dealing with issues of entitlement after Registration. It may be assumed that the great majority of disputes over entitlement that are dealt with before the Registrar will be dealt with under this provision.

As a result of a s.52 request, the Registrar may make a written declaration identifying the entitled persons at the time the design was first registered. A declaration can arise when:

• One or more of the specified entitled persons was not entitled; and/or

• One or more persons were also an entitled person.

Where the Registrar makes a declaration, the original design must be revoked [s.52(3)]. However the properly entitled persons may be entitled to file a new design application – with the priority date of the original application being preserved. [s.55]. This is discussed in D13.5 below.

D13.4.2 Process for handling s.52 requests

A request under s.52 is fundamentally an inter partes dispute involving a hearing. In this regard, regulation 11.24 applies. That is, (and subject to any specific requirements of the regulations) the practice and procedure for the purpose of enabling the application to be decided is to be determined by the Registrar

The issues surrounding regulation 11.24 were discussed [in the context of an identical provision in the Patents Act 1990 for dealing with the practice and procedure with inter alia ownership disputes] in Somnomed Ltd v Commissioner of Patents [2006] FCA 765 (23 June 2006). In that case, the delegate directed the parties file their evidence in parallel. However the patent applicant wanted the requestor to file his evidence first – and sought AD(JR) review. The Court stated:

[19] …. the determination of the Deputy Commissioner was no more than a procedural ruling. It did not affect the rights of any party including Somnomed. The determination of the Deputy Commissioner on 6 July 2005 is not a decision made under an enactment within the meaning of s 3 of the ADJR Act. No review is possible under s 5 of the ADJR Act because there is no reviewable decision.

….

[23] In my opinion, there was no breach of the rules of natural justice nor did the Deputy Commissioner commit an error of law. The procedure adopted by the Deputy Commissioner requires Somnomed to provide and therefore reveal the material it relies on in resisting Mr Mehta's application at the time his material is furnished. However, Somnomed would subsequently have the opportunity to provide further material to contest or contradict Mr Mehta's material. It will have the opportunity both to advance its case and to meet the


8


case of Mr Mehta. On its face, this is an unexceptionable procedure and cannot, in my opinion, be said to constitute a denial of procedural fairness.

[24] A possible qualification of this observation might have arisen if Somnomed had a right recognised by the Patents Act and the procedure proposed by the Deputy Commissioner itself derogated from or denied that right. But that is not the case. The Patents Act permits an application under s 36. It confers a right on a person to make the application. In any such application, the Commissioner must be satisfied that specified circumstances exist before exercising the power conferred by that section. Plainly, the person who seeks the exercise of the power must persuade the Commissioner that circumstances exist authorising its exercise. I do not think it is helpful, in this context, to speak of an onus of proof. The burden of proof in relation to an administrative decision of the type presently under consideration is the burden to persuade the decision maker so that the requisite level of satisfaction is reached. It is not a legal burden in the sense used in the context of adversarial litigation. There is an accepted and uncontroversial line of authority that it is inappropriate to draw too close a parallel between the adversarial process in judicial proceedings and decision making authorised by legislation.

D13.4.2.1 The requirement of the request

Under regulation 4.12, and application made under s.51 for revocation under s.52 must:

…

(b) include a statement of the grounds on which the application is made

That statement should outline the basis of the application sufficient for the Registrar to form the view that a plausible case for revocation under s.52 may exist.

There is a difference between setting out the basis of the case, and providing evidence to support the case. For example, if the case was based on an alleged breech of a written agreement, the statement should identify the existence of that agreement and its significance to the case; however a copy of that agreement would not normally be provided with the statement, but as part of the evidence (which is filed at a later time).

• Where that statement is insufficient to demonstrate the existence of a plausible case, the Registrar may ask the applicant to provide further information setting out the grounds in greater detail.

Where the applicant insists on pursuing the application in circumstances where the registrar is not convinced that there is a plausible case to be answered, the Registrar may likely require the applicant file all its evidence in support of their application before requiring the owner to file its evidence in support of its claim to entitlement.

• Where the Registrar has formed a view that there is a plausible case (or the applicant wishes to pursue the case irregardless), the registrar will notify the


9


owner of the application and request an indication be provided within 1 month of whether they wish to contest the application.

In the event the owner does not wish to contest the application, the Registrar may be in a position to deal with the dispute on an ex parte basis – that is, issue a declaration and revoke the Design without a full evidentiary process or hearing.

D13.4.2.2 Filing evidence

When it is known whether the owner will be contesting the request, the Registrar will set the regime for the evidence. Typically that regime will be:

• Each party to prepare their evidence in support of their claim to entitlement, and to file the original plus one copy with the Registrar within 2 months.

• When each party has filed their evidence, the Registrar will send the copy to the other party. Each party will then prepare their evidence in response, and file the original plus one copy with the Registrar within 2 months. The Registrar will forward a copy of the evidence in response to the other party.

• The matter will then be set for hearing.

This regime takes into account the fact that the owner of record ought to know the basis of their entitlement to the design – even though that entitlement has not been set out in detail in the design application.

However (and as noted above) in some circumstances the Registrar may require the requestor to provide their evidence first – in which case the owner will be required to provide evidence in answer, and the requestor may be given an opportunity to file evidence in response.

The evidence in proceedings before the Registrar is in the form of declarations. Regulation 11.26 sets out the requirements for a declaration. It may be noted that a declaration made under a State or Federal Statutory Declarations Act will almost certainly meet these requirements, as will a court affidavit.

Parties may request the Registrar allow further time for the preparation of evidence, or permit a party to file further evidence. Such requests will be dealt with on their merits under the broad exercise of discretionary powers of the Registrar, noting that the Registrar expects the parties to be forthcoming with relevant evidence. In particular, the deliberate withholding of relevant material until the last possible moment in the proceedings will not be viewed favourably.

D13.4.2.3 Production of Documents

Under s127(1)(c), the Registrar has the power to require the production of documents or articles. As at 2006 that power has rarely been invoked by the Registrar. However it may be assumed that the practice of the Registrar will have regard to the practice of the Registrar of Trade Marks and/or the Commissioner of Patents. In particular:


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• The threshold for issuing a notice requiring the production of documents or articles is whether the document or article could be relevant to the proceedings;

• Providing the Registrar is so satisfied, the notice will be executed and given to the person requesting the production. It is for that person to ensure the notice is timely served on the named person.

• A request to issue a notice to produce is dealt with ex parte. Any objection to the notice by the recipient is dealt with in the context of whether there is a lawful excuse for not complying with the notice. [Note s.134(2)].

• Where a notice is to be served on a non-party to the proceedings, the degree of particularity required is generally greater than for a notice to be served on a party to the proceedings.

• Many objections to a notice to produce relate to an unduly broad scope of the notice; where possible, the Registrar will encourage the parties to reach agreement between themselves over what will be produced – which is often much less than the literal scope of the notice.

• If necessary, the Registrar will conduct a hearing to determine whether there is a lawful excuse for not producing. At this stage, the threshold for requiring production is higher than the mere could be relevant; material that would not be relevant will not be ordered to be produced.

• The cost of complying with a notice to produce can be quite significant, and the Designs Act does not provide for any compensation for those compliance costs. This issue can arise in the context of whether there is a lawful excuse for not complying with the notice to produce. However the Registrar will encourage the parties to reach agreement between themselves about the documents to be produced, thereby avoiding the costs and inconvenience of a formal determination – if that is appropriate.

It should be noted that the enforcement provisions associated with s.134 are in the province of a court – and a hearing about lawful excuse is not about forcing production. Rather it is in the context that it is open for the Registrar, when determining the principle matter, to draw an adverse inference from the non-production in the absence of a lawful excuse.

Requests for the Registrar to issue a notice to produce should be made as early as possible in the proceedings.

D13.4.2.4 Cross-examination of witnesses – issuing a notice to appear.

The nature of s.52 disputes is such that cross-examination of witnesses may be appropriate. That power has rarely been invoked by the Registrar. However it may be assumed that the practice of the Registrar will have regard to the practice of the Registrar of Trade Marks and/or the Commissioner of Patents. In particular:

• Proceedings before the Registrar are primarily conducted on the basis of documentary evidence. Consequently the Registrar will entertain issuing a summons for a person who has provided declaratory evidence to be cross examined on that evidence [see reg 11.25]; however the Registrar will not


11


entertain issuing a summons to a person who has not provided declaratory evidence, nor entertain a process of examination-in-chief of a witness for the purpose of introducing substantially new evidence.

• The threshold for issuing a summons to appear as a witness is whether cross-examination could be relevant to the proceedings;

• Providing the Registrar is so satisfied, the summons will be executed and given to the party requesting the production. It is for that party to ensure the summons is timely served on the named person, and offering reasonable expenses to appear. Note that the offer needs to be enforceable for it to be effective. In situations involving long-distance travel, it may be appropriate for the party to provide the person with a non-refundable ticket.

• Any objection to the summons by the recipient is dealt with in the context of whether there is a lawful excuse for not complying with the summons. [Note s.134(2)].

• The Registrar will not draw an adverse inference from the non-appearance of a witness without first being satisfied that the summons was in fact received by the witness; was served with adequate time to allow the person to reasonable arrange their affairs to attend the hearing; and that an enforceable offer to pay reasonable expenses was made.

For an example of a contested summons to appear as a witness (involving travel from the United Kingdom, reasonable expenses, medical issues, and offer to be examined by video link) see the two decisions in Airsense Technology Ltd v Vision Systems Ltd 62 IPR 409 and 62 IPR 413.

A declarant who attends a hearing might be called for cross examination – even though they have not received a written summon to witness – as happened in Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 (6 January 2005)

D13.4.2.5 The hearing and decision.

The hearing will be held in Canberra, although it may be held at a state office if the parties so agree, and agree to share the travel costs of the hearing officer.

The conduct of the hearing is under the full control of the Registrar’s delegate (the hearing officer). Typically the party who initiated the s.52 matter will present their case first. The owner will then present their case, and respond to the applicant’s case. And finally the applicant will have a short opportunity to reply to the owner’s case. However the hearing officer may vary this in appropriate circumstances.

The fundamental determination to be made by the Registrar is the identity of the person or persons where entitled persons at the time the Design was registered. If those names do not match up with the names of the owners as registered at that time (either by reason of someone being included who shouldn’t, or someone not being included who should), the basic ground for making a declaration under s.52 has been established.

It may be noted that while as a general principle a person challenging the entitlement in a design has a burden of demonstrating their entitlement in the design, the owner


12


of record also has the burden of establishing their entitlement. The following observation in George Stack v Davies Shephard Pty Ltd and GSA Industries (Aust) Pty Ltd [1996] APO 1; (1996) AIPC 91-241; 34 IPR 117 applies mutatis mutandis to applications made under the Designs Act 2003:

A patent may only be granted to an eligible person (section 15). When granting a patent, the Commissioner normally does not require proof of entitlement; rather the patent is granted on the basis of the prima facie claim to entitlement that the applicant provides in the 'notice of entitlement' required by regulation 3.1(2). In my view, where there is proper cause to query the entitlement of the patentee it is incumbent upon them to provide substantiation of their asserted entitlement to the grant of a patent. Inability to substantiate entitlement must prima facie leave it open to find that the patentee was not entitled to be granted the patent.

A finding of there being a mismatch between the identity of the entitled persons at registration, and the persons actually registered as owners at that time, does not automatically result in the Registrar making a written declaration – the issuance of that declaration involves a discretionary element. Factors that might be relevant to the exercise of the discretion would include the conduct of one or more of the parties – including conduct that might result in an estoppel in pais as arose in Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241. See Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8, paras 28 – 31.

If the Registrar issues a written declaration under s.52(1), an immediate consequence is that the design is revoked – s.52(2).

The Registrar has the power to award costs in respect of the hearing. Usually costs area awarded against the party who is unsuccessful. The costs are taxed in accordance with Schedule 3 of the regulations.

Note: An action under s.52 is not an ‘opposition’. Consequently items 1 and 2 of Part 1 of Schedule 3 do not apply. [Those items only apply to actions under s.137(6).]

The written decision should be issued within 3 months of the hearing. However it will take longer if, as a result of matters raised at the hearing, the parties are given an opportunity to file more material.

The decision is appellable to the Federal Court [s.52(7)]. The time for filing an appeal is set in the Federal Court Rules. Generally, it is 21 days from the date of the decision. [O58 R4].

D13.4.3 Typical disputes

There is currently very little direct precedent for S.52 matters. Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8 was the first contested matter under s.52 of the 2003 Act to be decided. [Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 was decided under the assignment provisions of the 1906 Act.] There have been numerous decisions under the equivalent provisions in the Patents Act 1990 that provide an indication of the types of disputes that can arise.


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The Designs Act has an apparently significant difference from the Patents Act 1990 – in that s.13(1)(b) of the Designs Act expressly deals with the situation of a design being created in the course of employment or contract. The effect of this provision is:

• By default, ownership of a design lies with an employer, or a person who contracts another person to create the design; and

• The default position on ownership can be varied by way of agreement between the parties.

However in the context of employment, the purpose of this elaboration is merely to make clear that the usual principle of the design being owned by the employer can be excluded or modified by agreement, rather than establishing any new principle of entitlement. [See paragraphs 7.6 and 7.7 and Recommendation 66 of the ALRC report into the Designs system.]

The following is a summary of issues that can arise:

• An employee authors a design in their own time, and the contract of employment does not deal with intellectual property issues. The employer is likely to be the entitled person if the design related to matters which the employee was expected to do as part of their work duties. However an employee whose duties did not involve suggesting or developing new designs is entitled to a design developed in their spare time – even if that design related to the business of the employer. Collymore and Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2008] ADO 9, Spencer Industries v Collins [2003] FCA 542, 58 IPR 425.

• A design is disclosed in circumstances where there is an implied fetter of confidentiality, and that confidentiality is breeched. Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8

• A director of a company has fiducial obligations to that company, such that any design directly relevant to the business of the company, but made by that director in their own time, may belong to the company.

• Where a person develops a design as an employee – such that the employer is entitled to the design – and seeks Design protection in their own name only, do they have the express consent of their employer? In particular, failure of the employer to respond to requests for consent (while extremely frustrating to the designer) does not constitute consent. [Eg Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO 1]

• A ‘former employee’ files design applications a few weeks or months following cessation of employment. The former employer may have reason to believe that the designs were authored while the person was still an employee (and hence belong to the company as employer) – but were deliberately hidden from the employer. The person will likely assert that the designs were created after cessation of employment. These situations often depend heavily on circumstantial evidence; in particular, a former employee who did create the designs whilst still an employee may well have destroyed any direct evidence from the employer’s records prior to departure.


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• Employee/employer arrangements must be ‘real’. For example, the fact that prisoners were paid a weekly allowance by a prison authority did not mean that the prisoners were employees of that the prison authority. [Eg Eddie Kwan, John Pierre Le Sands and Paul N Van Draanen v The Queensland Corrective Services Commission and The Queensland Spastic Welfare League [1994] APO 53; (1994) AIPC 91-113; 31 IPR 25]

• The Design came about as part of a project with many contributors. If all potential contributors worked for the same applicant, the rights of the applicant exist through employment contracts. However if some contributors were employed by a different person who was not named as an applicant, the applicant of record may not have good title to the design.

• The Design came about as part of a collaborative project. While the Design might have been created by a single individual, the ownership of the rights in the design may be determined on the basis of the collaboration. [Eg Commonwealth Scientific and Industrial Research Organisation et al [1995] APO 16; 31 IPR 67; (1995) AIPC 91-171]


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D13.5 Application by Entitled persons after revocation

It is frequently the case that the successful party will want to obtain Design protection in respect of the Design that has been revoked.

There are constitutional issues that preclude the Registrar from having the power to ‘forcibly’ transfer the rights in a registered design from one person to another. However there is no such barrier to the Registrar having the power to revoke a design right (see R v Quinn; Ex parte Consolidated Food Corporation [1977] HCA 62; (1977) 138 CLR 1), and granting a new Design right to a different person. This is the scheme applied in the Designs Act 2003.

Where a declaration has been made under s.52, the person(s) found to be entitled at the date the earlier design was registered merely file a new request for a Design. That application is processed in the same manner as for any new application for a Design. However:

i. The applicant will need to advise the Registrar at the time of filing (or at the latest, before registration) that they are claiming entitlement from the earlier design by way of s.55, and identify that earlier design(s) – so that the priority date and term of the design can be set on that basis. [After Registration, a request to amend the Register is unlikely to be allowable.]; and;

ii. The application must have with it a request for publication or registration. Otherwise it will almost certainly lapse at filing, since the priority date will most likely be more than 6 months prior to the filing date;

For the purposes of renewing the registration, the time period computed under s.47 is similarly based on the filing date of the original application from which the s.55 application was derived


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Chapter 14 - Publication, File Access

Table Of Contents D14 Publication, File access ..................................................................................... 1

D14.1 Background, general issues ............................................................................ 1

D14.2 Documents not publicly available .................................................................... 2

D14.3 Interaction with the Freedom of Information Act 1982 ..................................... 4

D14.4 Production of documents under s.61(2) .......................................................... 6

D14.4.1 Powers of the Courts ............................................................................ 6

D14.4.2 Powers of the Registrar ........................................................................ 6

D14.4.3 Precedent ............................................................................................. 7

D14.4.4 Who Access is Granted To ................................................................... 7

D14.4.5 Where Inspection is to Take Place ........................................................ 8

D14.4 Annex A Draft Undertaking for Access to view Documents under Section 61(1)(b) .............................................................................................................. 8

D14.5 Right of Lien ................................................................................................. 10


iii



The Designs Act 2003 provides a comprehensive regime for the public availability of documents on the file of a design application or registered design. The basic regime is:

• Before a design is registered or published, documents on the file are not publicly available. The only information publicly available is that published in the AOJD pursuant to s.25 – which is set out in regulation 3.04.

• After a design is registered or published, all documents on the file are publicly available – with some limited exceptions

It must be noted that the default position is that everything on the file is publicly available. This includes all file notes, annotations, ‘post-it’ notes or other material that an examiner or other staff member places on file – irrespective of content.


1


D14.2 Documents not publicly available

There are specific exceptions to the rule that all documents are publicly available at registration or publication. These exceptions are:

Plural designs

Registration or publication of just one design in an application results in publication of everything in the file.

However, if

• the application was amended to exclude one or more designs;

• one or more designs were withdrawn from the application; or

• one or more designs was neither registered nor published

the designs that were excluded, withdrawn or not registered or published are not publicly available. Any other document that relates exclusively to those designs is also not publicly available.

Correspondence and file notes generated within the Designs Office fall within this regime. It may be noted that:

• Where an application for plural designs is filed, and the applicant identifies that fact – the designs are allocated separate files. Subsequent correspondence will be specific to a particular design. In that way, the likelihood of file notes and official correspondence containing reference to other designs (with consequential publication) is minimised.

• Where an application discloses plural designs, but the applicant fails to identify that fact, the consequential initial correspondence will necessarily refer to all designs. That correspondence will become open to public inspection once any of the relevant designs is registered or published.

• Prior to registration or publication:

• if the Registrar needs to communicate with the owner with respect to several designs; and

• that correspondence requires incorporation of some or all of the representations (or otherwise disclose material detail of the designs)

the Registrar will endeavour to provide separate communication for each design – and will only include the representation from another design if that is unavoidable in the circumstances.

Where an application containing plural designs is filed, a separate file is allocated to each design, with common correspondence being placed on each. A request to amend one of those designs under s.28 or s.66 can rely on any material filed with the application. However that material might not be located on the file of the design being amended. Where some of those designs are registered or published, and the others


2


are not, the delegate will need to carefully consider which documents in the various files are publicly available. [section 60(4)].

Legal exceptions

There are 3 specific exemptions associated with legal issues:

1. A document that would be privileged from production in legal proceedings on the basis of legal professional privilege. S 60(2)(a)

This covers legal advice sought by the Registrar for the purpose of legal proceedings in which the Registrar is involved. In particular, when a party appeals against a decision of the Registrar, they cannot use the publication provisions to obtain access to the legal advice the Registrar is obtaining with respect to the appeal.

2. A document that is subject to an order of the court or tribunal that prohibits disclosure…. S.60(2)(b)

This merely ensures that a court order of confidentiality over a document cannot be bypassed by the publication provisions.

3. A document required to be produced under s.127(1)(c) – if the Registrar is satisfied that the document, or information in the document, should not be open for public inspection.

This protects confidentiality in material that a person is required to file in response to a Notice to Produce. Importantly, the Registrar must be satisfied that the document or material should not be published, and will give consideration to:

• Has the person producing the material, or who otherwise ‘owns’ the documents, asserted confidentiality in the material at the time the documents were produced (or when they became aware the documents had been produced)?

• Does the material contain information in which confidentiality might be assumed? [e.g. patient medical records; commercial sales data.]

• Is the material in which confidentiality asserted truly of a confidential nature?


3


D14.3 Interaction with the Freedom of Information Act 1982

In practice the FOI Act has no practical application with respect to the file of a design application, or the file of a registered design.

Specifically, the FOI Act does not apply with respect to any document that is open to public access by another enactment [s.12, FOI]. S.60 of the Designs Act provides a regime for the public access of all documents on the file of a Design.

Note that s.31 and the Third Schedule to the FOI Act formally recognises the prohibition against publication provided by sections 61, 108 and 109 of the Designs Act.

For these reasons, a request under the FOI Act for documents of the file of a design cannot be processed under the FOI Act.

Where a person files an FOI request for documents on a design file, the FOI unit will (where practical)

• contact the requestor by phone,

• explain that the documents can only be provided under s.61 of the Designs Act

• indicate which documents if any are available;

• indicate the likely cost under the Designs Act of supplying copies of those documents.

Where the requestor is well known to the Office, the FOI unit may annotate the request on the basis of the advice received over the phone. The request will then be passed on for processing in accordance with s.60 of the Designs Act and the associated fees. Otherwise the requestor will be invited to submit a new request, it being in accordance with s.60.

Section 12(1)(b) and (c) of the FOI Act provides:

Part not to apply to certain documents

(1) A person is not entitled to obtain access under this Part to:

(a) …; or

(b) a document that is open to public access, as part of a public register or otherwise, in accordance with another enactment, where that access is subject to a fee or other charge; or

(ba) …; or

(c) a document that is available for purchase by the public in accordance with arrangements made by an agency.

Section 38 of the FOI Act provides:


4


Documents to which secrecy provisions of enactments apply

(1) Subject to subsection (1A), a document is an exempt document if:

(a) disclosure of the document, or information contained in the document, is prohibited under a provision of an enactment; and

(b) either:

(i) that provision is specified in Schedule 3; or

(ii) …

(1A) …

(2) …

(3) …

Schedule 3 to the FOI Act specifies paragraph 61(1)(a) and sections 108 and 109 of the Designs Act.

It should be noted that while the Exempt status of s.38 of the FOI Act does not apply in relation to documents in so far as they contain personal information about a person (see s.38(2) of the FOI Act.) However as a practical matter this is extremely unlikely to apply with respect to a Designs file.


5


D14.4 Production of documents under s.61(2)

Sec 61(1)(a) of the Designs Act provides that certain documents must not be published or open to public inspection. Sec 61(1)(b) provides that such documents:

"are not liable to be inspected or produced before the Registrar or in a legal proceeding unless the Registrar, court, or any person having power to order inspection or production, directs that the inspection or production be allowed."

These provisions are identical to s.56(1) of the Patents Act 1990. These provisions are rarely invoked, and the following is based on the Patent Office Manual of Practice and Procedure.

The operation of these provisions will typically arise in two circumstances:

• Proceedings which have arisen before the design has been registered (such as a dispute under s.28) – such that the relevant material is not open to public inspection under s.60; and

• Proceedings (such as s.51, 67(3) or 137) where material has been produced following a Notice to produce under s.127(1)(c), and the Registrar has taken steps to protect the confidentiality of some or all of the produced material under s.127(2).

D14.4.1 Powers of the Courts

The power of a court under sec 61(1)(b) is exercised by means of service on the Registrar of a subpoena ordering the production of specific documents. Any such subpoena needs to be handled promptly and correctly; it should be passed on by hand to a person in an area with relevant legal responsibilities in IP Australia. Note that it has been known for Commonwealth Officials to be dealt with at a personal level for contempt of court as a result of inappropriate handling of subpoenas.

D14.4.2 Powers of the Registrar

The powers of the Registrar are concerned with providing for inspection before him or her of documents which, pursuant to sec 61(1)(a) are not published or OPI.

Requests for such inspection will most likely arise in relation to:

• ownership disputes under s.29 (or possibly s.30);

• sec 137 requests for an extension of time (before registration); and

• financial disputes (but it is likely that such disputes will be before a court, and the relevant documents the subject of a subpoena)

Depending on the person making, and the nature of, the request - the person making the request, and any person having proprietary rights in the documents concerned (whether those rights are current or retrospective), may be entitled to be heard before the Registrar. Thus any requests under sec 61(1)(b) must be forwarded to the Trade Marks Hearing section for consideration.


6


D14.4.3 Precedent

There have been very few requests under sec 61(1)(b) of the Designs Act. or sec 56(1)(b) of the Patents Act 1990, or the equivalent provision under the Patents Act 1952 [sec 55(1)(e)]. However sec 55(1)(e) was judicially interpreted in Secton and Vortoil v Delawood and others (Supreme Court of Victoria, unpublished), where Fullagar J. said:

"In s.55(1)(e) I consider that the words "before the Commissioner or in a legal proceeding" govern not only the preceding word "produced" but also the preceding word "inspected". The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection "in a legal proceeding". It may be - and it is unnecessary to decide - that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, 'live' legal proceedings."

- but note that this quote refers largely to the powers of a Court.

A request to the Commissioner of Patents under sec 55(1)(e) of the Patents Act 1952, and how it was dealt with, is referred to in Magee v Farrell (1986) AIPC 90-296.

Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc, (1998) AIPC 91-434.

D14.4.4 Who Access is Granted To

Where there is a justification for granting access to unpublished documents, the general rule is that they can be made available to a person's legal representative on the making of appropriate undertakings regarding confidentiality. An example of a draft undertaking is given in D14.4 Annex A. However the appropriateness of this must be assessed on the merits of each individual case.

Inspection will usually be limited to a party’s legal representative or an employee of the legal representative or an independent third party expert. In certain circumstances, such as ownership disputes, the other party would be granted restricted access if it could be shown that access was essential in the interests of justice and there would be no breach of duty of confidentiality. (See Davies v Eli Lilly & Co. (1987) 1 All ER 801).

Access to a not-OPI file will only be given to an independent person. This creates a fundamental difficulty for an unrepresented party seeking access. However in the case of an ownership dispute under s.28 an appropriate solution is to allow the design to proceed to grant - such that all documents on the file become publicly This document is controlled. Its accuracy can only be guaranteed when viewed electronically. Effective Date: 20 September 2013

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available – and convert the s.28 proceedings to proceedings under s.51. [See Dennis Gravolin and Trailer Vision Pty Ltd v Locmac Holdings Pty Ltd as trustee for Locmac Trust [2007] ADO 7, as explained in paras 2 and 3.]

Of course, if the parties can mutually agree to access, documents can be exchanged outside the Designs Act without involving the Registrar.

Where the Registrar has some concerns about releasing the documents and the parties cannot agree to access, it may be appropriate to follow the process of Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088. In such cases, if access to unpublished designs is sought and granted it may be on the following basis:

• the person seeking access must provide the Registrar with a statement of what they allege is their design

• a designs examiner, or agreed third party, will compare the alleged design with the designs contained in the application and report whether the alleged design is disclosed in the unpublished design application

• upon appropriate undertakings as regard confidentiality being made, the report will be given to the person seeking access, and the design applicant (or their respective legal representatives).

See Brisalebe v Searle 30 IPR 91, (1994) AIPC 91-088.

In situations where there is a real issue of ownership, and the relevant application is not published, there may be serious difficulties for the parties in preparing their evidence. While Registrar may consider it appropriate to allow inspection of the file (including evidence filed by the other party) by the legal representatives, it is unlikely that the Registrar will allow inspection under sec.61(1)(b) by the actual party of any material that discloses the technical content of the application. Nor is the Registrar likely to approve communication of that technical content by the legal representative to the actual party. However, this difficulty can be avoided if the parties can reach agreement between themselves to give each other their relevant evidence, without the direct involvement of the Registrar.

D14.4.5 Where Inspection is to Take Place

Normally inspection can take place at the Designs Office in Canberra, or at any of the State Offices. However, if s.127(2) is invoked with respect to produced material, particularly if documents sought for inspection are particularly voluminous, the Registrar may require that inspection is to take place at the Designs Office in Canberra.

D14.4 Annex A Draft Undertaking for Access to view Documents under Section 61(1)(b)

In the matter of:

Design application no:

in the name of and a <request> under section by


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I ……………………………………………….. <name> apply to the Registrar for access to inspect certain documents under section 61(1)(b) of the Designs Act 2003.

These documents are: .

I undertake that I will treat those documents and the information contained therein as confidential and will not disclose the information contained therein to any other person until I am satisfied that they have been granted access by the Commissioner to inspect that material. I also undertake to only use the information contained in the documents for the purposes of the above <request/opposition> under section


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D14.5 Right of Lien

S.142 of the act, together with regulation 11.16, provides that a registered patent attorney has, in relation to documents and property of a client in a matter relating to designs, the same right of lien that a solicitor has in relation to the documents and property of a client.

The regulations do not recognise any right of lien with respect to a registered trade marks attorney, or an agent.

The right of lien only exists in respect of documents actually in the possession of the registered patent attorney. In particular, an attorney has no right of lien over documents in the possession of the Registrar.

Where an owner changes attorneys, this right of lien may result in the former attorney refusing to pass documentation about a design to the new attorney (typically demanding payment of unpaid bills). However any asserted right of lien cannot operate to prevent the owner or their new attorney obtaining copies of documents on the files of the Designs Office - see s.61(3)


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Chapter 15 - Surrender of a Design

Table Of Contents D15 Surrender of a Design ........................................................................................ 1

D15.1 Overview ......................................................................................................... 1

D15.2 Processing an offer to surrender ..................................................................... 3

D15.3 Discretionary considerations in Accepting the Offer ........................................ 4

D15.4 Surrender by consent - and ownership matters ............................................... 5


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D15.1 Overview

S.50 of the Act provides that an owner can offer to surrender their design at any time. The consequence of surrender is revocation of the design. Where the surrender is associated with entitlement of the registered owner, the surrender can also be the prelude to the filing of a new design application under s.54. However revocation does not follow automatically – the decision to accept the offer and revoke the design is in fact a discretionary power.

An offer to surrender a design is uncommon. In particular, where an owner has lost commercial interest in their design, there is no need or requirement for them to offer to surrender the design – as it will inevitably lapse in due course by merely doing nothing (even if a third party requests examination.) It can thus be assumed that an offer to surrender a design has been driven by commercial or legal considerations (typically not visible to the Registrar) and that there is probably a third party that has some interest in the surrender.

Illustrative of situations where an offer to surrender might be made are:

• There have been threats of infringement action, with counterclaims of invalidity in the Design. The parties agree to settle the litigation by surrendering the Design.

• There has been an allegation that the owner is not an entitled person, with or without a proceedings being commenced under s.51. The parties agree to settle the litigation by surrendering the Design – so that a new design can be applied for under s.54.

• A person buys a license from the owner. The owner, having received payment, offers to surrender the design so that other people can freely use the design.

• The design forms the basis of a security that has been registered (e.g. there is a registered mortgage on the design). The owner, getting into financial difficulties, decides to have the Design go into the public domain rather than have it transferred to the mortgagor.

As a surrender may affect the interests of third parties, the surrender mechanism includes a number of safeguards for third party interests. In particular:

• The Registrar must notify each person entered on the Register as having an interest in the Design, of the offer to surrender. [s.50(2)(a)] An advertisement in the AOJD does not meet the requirement for notifying these persons; they must be notified directly, and they then have one month in which they can make submissions about the surrender. [s.50(2)(b)]

• The offer to surrender must be advertised in the AOJD, and any interested person can request to be heard. [reg 4.11(3) and (4)]

• A design cannot be surrendered if there is a compulsory licence in effect. [s.50(5)].


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• If there are concurrent court proceedings in relation to the Design, the Offer to Surrender cannot be accepted without the consent of the court and all parties. Note that the court proceedings could be in respect of any matter relating to the design, and not just proceedings for infringement, revocation, or validity (compare with the dictionary definition of ‘relevant proceedings’).

Because of these issues, all requests to surrender a design are to be referred to Hearings.


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D15.2 Processing an offer to surrender

When an offer to surrender a design has been filed, the Registrar will:

• Identify all persons recorded in the Register as having an interest in the Design, and write to them at their last known address – giving them an opportunity to make submissions on the offer to surrender, and setting a time limit for making those submissions as set in regulation 4.11(2);

• Advertise the offer to surrender in the AOJD, indicating that anyone who wishes to be heard in relation to the surrender must request to be heard within 1 month of the date of the AOJD notice. [Reg 4.11(3) and (4)]

Note: typically the notice under Reg 4.11(2) will issue before the advertisement in the AOJD. Nevertheless the Reg 4.11(2) notice should indicate that:

* an AOJD advertisement will be appearing in the near future;

* the Registrar will consider any submissions they file – irrespective of whether they request to be heard; and

* if they do file submissions, they should seek legal advice about whether they should request to be heard.

Where no third party makes submissions or requests to be heard, and the requirements of s.50(4) and (5) are met [court proceedings, and compulsory licences], the Registrar will accept the offer to surrender the Design by revoking it, and having a relevant entry made in the Register.


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D15.3 Discretionary considerations in Accepting the Offer

Where a third party makes submissions, or requests to be heard, the registrar will need to decide whether or not to accept the offer to surrender. The Act provides no relevant criteria. Rather the decision needs to be based on a consideration of the equitable interests of the parties. In this regard, the nature of the decision is similar to that under s.29 – see D13.2.1.

As a general proposition, the Registrar will not accept an offer to surrender if its effect is to deprive the other party of a lawful beneficial right. Also the Registrar will not be sympathetic to a party who is using the proceedings primarily to frustrate or inconvenience the other party. Some relevant considerations are:

• Is the surrender consistent with any contractual agreements between the parties?

• Will the surrender have the effect of depriving the other party of a right or asset?

• Is one party trying to obtain an advantage over the other party by way of the surrender, or objecting to the offer to surrender?

It should be noted that the public interest lies in accepting the offer to surrender. Accordingly, any benefit of doubt about whether the offer should be accepted will be resolved in favour of accepting the offer to surrender.


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D15.4 Surrender by consent - and ownership matters

One of the scenarios for an offer to surrender is the existence of a dispute over where the registered owner is an entitled person. In this situation:

• The registrar may make a declaration under s.54(2) that another person was an entitled person at the time the design was registered; and

• That person may file a new application for that design, with that design having the priority date of the surrendered design.

Where an offer to surrender is made as a result of such a dispute, the parties may seek to have the matter dealt with by consent. That is, both parties agree between themselves that the registered design should be surrendered, that the Registrar should make a relevant declaration under s.54(2), and that a new design should be filed under s.55.

A consent agreement between the parties cannot require the Registrar to make a declaration under s.54(2). The Registrar can only make such a declaration if she is satisfied on a factual basis of who was the entitled person at the time the design was first registered. Accordingly the relevant party (or parties) will need to provide the registrar with material that positively demonstrates the identity of the entitled person at the time the design was first registered – sufficient for the Registrar to be reasonably satisfied of that person’s entitlement. In this regard, mere assertions are insufficient; conversely the extent of information that might be required in a full hearing is not required. Rather there should be a declaration from a person with relevant knowledge of the facts, setting out the basis of the person’s entitlement. The declaration will need to be of sufficient detail to infer the basis for why the original owner was not an entitled person – so that the Registrar can be satisfied that the original owner was not an entitled person (which is a prerequisite to the making of the declaration).

Having regard to the dire consequences to the parties if the offer to surrender is accepted, and subsequently the Registrar refuses to make a declaration under s.54(2) – the Registrar will, if asked, provide an opinion before accepting an offer to surrender, about whether information proposed to be filed in support of the declaration would satisfy the Registrar that a declaration should be made.


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Chapter 16 - Prohibition Orders

Table Of Contents D16 Prohibition Orders .............................................................................................. 1

D16.1 Overview ......................................................................................................... 1

D16.2 Initial processing ............................................................................................. 2

D16.3 Effect of a prohibition order ............................................................................. 3

D16.4 Revocation of a prohibition order .................................................................... 4

D16.5 Appeal rights ................................................................................................... 5


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D16.1 Overview

S.108 of the Designs Act prohibits the publication of information about certain designs if ‘it appears to the Registrar to be necessary or expedient to do so in the interests of the defence of the Commonwealth’. This prohibition is achieved by way of a written order made by the Registrar.

There is an equivalent mechanism in the Patents Act 1990 (section 173). In the event of a Design being subject to, or being potentially subject to, a prohibition order under s.108, staff should consult with relevant officers within the Patents Office for procedural guidance.


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D16.2 Initial processing

There are two basic paths for a Design being made the subject to a prohibition order:

1. The application is filed as a convention application (usually from the UK or US). Filing occurs by safe-hand delivery – with the mail-room staff having procedures to handle such packages. [If an Australia attorney is involved, they are expected to have relevant security clearance and facilities.] The application will include a document permitting the application to be filed providing it is subject to a prohibition order.

2. The application is filed by normal means. The formalities officer on initial viewing of the application assesses the application against a list of keywords – and if concerned that it might relate to prohibited subject matter, will refer the case to the Designs Administration Manager. If the Designs Administration Manager believes a prohibition order is appropriate he will:

a. Arrange for an interim prohibition order to be prepared and signed by the Registrar or her delegate; and

b. Arrange for the design application to be referred to an appropriate agency for formal advice as to whether a prohibition order should be maintained.

While an application is being seriously investigated for a possible prohibition order, the file should be treated as if it was in fact subject to an order.

Where an application is made the subject of a prohibition order, it is maintained in a Class A container, with access being strictly on a need to know basis by those with appropriate security clearance.


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D16.3 Effect of a prohibition order

Where a prohibition order is in place, disclosure of the design to any person without the written consent of the Registrar is an offence – with a penalty of imprisonment for two years. [s.109(1)]. This offence applies to both the applicant and related entities, and to staff in the Designs Office.

In situations where the owner of the design wishes to interest the defence industries in the manufacture or purchase of the product, the owner will need to seek the written approval of the registrar before disclosing the design to Defence officials, or to Defence contractors. The Registrar will usually seek advice from appropriate agencies before making a variation.

Where a prohibition order is in place, the application can continue to be dealt with under the Act (eg minimum filing requirements, formalities check, s.28 amendments, recordal of assignments) – up to the point of Registration. Indeed, the applicant must comply with the usual time limits associated with requesting registration – failing which the design lapses in the normal manner. Note that the prohibition against registration under s.108 applies subsequent to any decision under Chapter 4 Part 3 Division 1 about whether a design should be registered on its merits. However the design cannot be published, and the act of registration cannot occur, while the prohibition order remains in force. [s.108(3)].

Since an application that is subject to a prohibition order cannot be registered, such a design cannot be examined – at least until after the prohibition order is revoked. Accordingly, examiners will not see any such designs in their day-to-day work. Nor will they require security clearances in order to examine such designs.

Since a design that is subject to a prohibition order is not published before the order is revoked, such a design does not become part of the prior art base of s.15(2)(b) until the prohibition order is revoked – with an associated publication date. Once the prohibition order is revoked that design will also form part of the prior art base under s.15(2)(c) – with no loss of entitlement to the priority date.


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D16.4 Revocation of a prohibition order

A prohibition order may be revoked. This typically arises in the following manner:

1. An interim prohibition order is put in place pending formal advice – and the formal advice is that a prohibition order is not required.

2. The design has been filed under international agreements, and the foreign agency has advised that the prohibition order has been removed in that foreign country.

3. The applicant asks for review of the need for a prohibition order.

Before revoking a prohibition order, the Registrar will usually obtain advice from relevant agencies.

When a prohibition order is revoked, and the design would otherwise have been registered and/or published, that registration and publication is affected forthwith.


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D16.5 Appeal rights

The imposition of a prohibition order can severely impact upon the owner’s ability to market their product. The Registrar’s decision to impose a prohibition order is subject to review by the Administrative Appeals Tribunal [s.136(1)(f)]. In such an event the Registrar will take steps to ensure the AAT applies confidentiality procedures appropriate to the nature of the material being considered.


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