Designs Regulations 2004 (consolidated as of June 20, 2015), Australia, WIPO Lex

Main text(s)

English Designs Regulations 2004 (consolidated as of June 20, 2015)

Open PDF open_in_new

Designs Regulations 2004 (consolidated as of 20 June 2015)

Prepared by the Office of Parliamentary Counsel, Canberra

Designs Regulations 2004

Statutory Rules No. 117, 2004

made under the

Designs Act 2003

Compilation No. 13

Compilation date: 20 June 2015

Includes amendments up to: SLI No. 88, 2015

Registered: 22 June 2015

Federal Register of Legislative Instruments F2015C00507

2 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

About this compilation

This compilation

This is a compilation of the Designs Regulations 2004 that shows the text of the

law as amended and in force on 20 June 2015 (the compilation date).

This compilation was prepared on 22 June 2015.

The notes at the end of this compilation (the endnotes) include information

about amending laws and the amendment history of provisions of the compiled

law.

Uncommenced amendments

The effect of uncommenced amendments is not shown in the text of the

compiled law. Any uncommenced amendments affecting the law are accessible

on ComLaw (www.comlaw.gov.au). The details of amendments made up to, but

not commenced at, the compilation date are underlined in the endnotes. For

more information on any uncommenced amendments, see the series page on

ComLaw for the compiled law.

Application, saving and transitional provisions for provisions and

amendments

If the operation of a provision or amendment of the compiled law is affected by

an application, saving or transitional provision that is not included in this

compilation, details are included in the endnotes.

Modifications

If the compiled law is modified by another law, the compiled law operates as

modified but the modification does not amend the text of the law. Accordingly,

this compilation does not show the text of the compiled law as modified. For

more information on any modifications, see the series page on ComLaw for the

compiled law.

Self-repealing provisions

If a provision of the compiled law has been repealed in accordance with a

provision of the law, details are included in the endnotes.

Federal Register of Legislative Instruments F2015C00507

Designs Regulations 2004 i

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Contents

Chapter 1—Introductory 1 1.01 Name of Regulations .........................................................1

1.02 Commencement.................................................................1

1.03 Designs Regulations 1982—repeal ....................................1

1.04 Interpretation .....................................................................2

1.05 Convention country ...........................................................3

1.06 Giving of documents by Registrar .....................................3

Chapter 2—Design rights, ownership and registrable

designs 4 2.01 Certain things to be disregarded in deciding

whether a design is new and distinctive ............................4

Chapter 3—Design applications 6

Part 3.2—Applications 6 3.01 Minimum filing requirements............................................6

3.02 Applications covering excluded designs ...........................6

3.03 Notice—minimum filing requirements..............................6

3.04 Publication of receipt of application..................................7

3.05 Filing date..........................................................................8

3.06 Priority date—designs disclosed in basic

applications .......................................................................8

3.07 Certain basic applications to be disregarded......................9

3.08 Priority date—excluded designs......................................10

Part 3.3—Amendment or withdrawal of applications 11 3.09 Request for amendment of application ............................11

3.10 Disputes between applicants—requests for

determinations .................................................................11

3.11 Requests for direction specifying persons as

applicants or entitled persons ..........................................11

3.12 Publication of certain details of amended

applications .....................................................................12

3.13 Withdrawal of designs and design applications...............12

Part 3.4—Lapsing of applications 13 3.14 Period within which application lapses ...........................13

3.15 Form of notice .................................................................13

Federal Register of Legislative Instruments F2015C00507

ii Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 4—Registration or publication of designs 14

Part 4.2—Requests for registration or publication 14 4.01 Requests for registration or publication...........................14

4.02 Subsequent requests for registration—applications

in respect of more than 1 design......................................14

4.03 Period within which replacements of request may

be made ...........................................................................15

Part 4.3—Registration 16 4.04 Formalities check—applications in respect of 1

design only ......................................................................16

4.05 Formalities check—applications in respect of more

than 1 design ...................................................................17

4.06 Registrar must refuse to register certain designs .............18

4.07 Period within which Registrar must register certain

designs after refusal.........................................................19

4.08 Certificate of registration and notice of registration ........19

4.09 Renewal of registration ...................................................20

4.10 Surrender of registration..................................................21

4.11 Revocation of registration on surrender ..........................21

4.12 Revocation of registration on grounds relating to

entitled persons................................................................22

4.13 Notice of revocation of registration.................................22

4.14 Applications by entitled persons after revocation

following surrender of registration ..................................22

Part 4.4—Publication 23 4.15 Publication of a design ....................................................23

Chapter 5—Examination of designs 24 5.01 Requirements for request for examination of

design ..............................................................................24

5.02 Grounds for revocation of registration of design .............24

5.03 Examination of design—procedures................................24

5.04 Period in which examination of a design must be

completed ........................................................................26

5.05 Amendment of registration..............................................27

5.06 Certificate of examination and notice of

examination .....................................................................28

5.07 Revocation of registration after examination...................28

5.08 Material provided to Registrar.........................................29

Federal Register of Legislative Instruments F2015C00507

Designs Regulations 2004 iii

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 7—Jurisdiction and powers of courts 30 7.01 Application to court for compulsory licence ...................30

7.02 Revocation of registration after grant of

compulsory licence..........................................................30

Chapter 8—The Crown 31 8.01 Acquisition of design by the Commonwealth..................31

8.02 Period within which designs must be registered or

published after prohibition ..............................................31

Chapter 9—The Register 32 9.01 Other particulars to be entered in the Register.................32

9.02 Inspection of Register......................................................32

9.03 Amendments of Register to record changes of

ownership ........................................................................32

9.04 Notice specifying amendments to Register .....................33

9.05 Correction of Register .....................................................33

Chapter 10—Administration 34 10.01 Delegation by Registrar...................................................34

10.02 Costs (Act s 127) .............................................................34

Chapter 11—Miscellaneous 36

Part 11.2—Fees 36 11.01 Fees payable ....................................................................36

11.01A Approved means..............................................................37

11.02 Failure to pay—fee for filing a design application ..........37

11.03 Failure to pay—fee for filing a request for

registration covering a further design ..............................38

11.04 Failure to pay—fee payable by the registered

owner for filing a request for examination ......................38

11.05 Failure to pay—fee payable by the registered

owner in relation to a request for examination filed

by another person ............................................................39

11.06 Failure to pay—certain other fees for filing ....................39

11.07 Failure to pay—fee for requesting a hearing ...................39

11.08 Failure to pay—fee for appearing at a hearing ................40

11.09 Failure to pay—fees for requesting supply of

documents by the Registrar .............................................40

11.10 Consequences if Registrar does not invite payment ........40

Federal Register of Legislative Instruments F2015C00507

iv Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

11.11 Exemption from fees (Act s 149) ....................................41

11.12 Recovery of fees..............................................................41

Part 11.5—Extensions of time 42 11.13 Extensions of time for doing a relevant act .....................42

11.14 Consequence of extension—notice of restoration ...........43

Part 11.6—Other 44 11.15 Agents (Act s 141)...........................................................44

11.16 Right of lien of registered patent attorneys (Act s

142) .................................................................................44

11.18 Documents to be in English.............................................44

11.19 Service of documents ......................................................45

11.20 Address for correspondence ............................................45

11.21 Death of applicant or registered owner (Act s 146,

s 147)...............................................................................46

11.22 Exercise of discretionary powers by Registrar ................46

11.23 Written submissions and oral hearings ............................47

11.24 Practice and procedure in relation to applications,

oppositions and other matters ..........................................48

11.25 Evidence..........................................................................48

11.26 Declarations.....................................................................48

11.27 Non compliance in relation to documents other

than design applications ..................................................49

11.28 Directions for actions not otherwise prescribed...............50

11.29 Acting for persons unable to act ......................................50

11.30 Requirements that cannot be complied with for

reasonable causes ............................................................50

11.31 Review of decisions.........................................................51

11.32 Period for doing certain acts—office not open for

business ...........................................................................51

11.33 Days when office not open for business ..........................52

11.34 Period for doing certain acts—acts to which

section 136A does not apply............................................53

Chapter 12—Repeal, transitional and saving

provisions 54

Part 1—General 54 12.01 Conversion of transitional applications ...........................54

12.02 Former Designs Regulations—transitional......................54

Federal Register of Legislative Instruments F2015C00507

Designs Regulations 2004 v

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

12.03 Designs excluded from transitional applications

that are not converted applications ..................................54

12.04 Protection and compensation provisions—

transitional.......................................................................56

Part 2—Amendments made by particular instruments 57 12.05 Amendments made by the Intellectual Property

Legislation Amendment (Raising the Bar)

Regulation 2013 (No. 1) ..................................................57

Schedule 2—Formal requirements 58

Schedule 3—Costs 62

Part 1—Costs 62

Part 2—Expenses and allowances 63

Schedule 4—Fees 64

Endnotes 67

Endnote 1—About the endnotes 67

Endnote 2—Abbreviation key 68

Endnote 3—Legislation history 69

Endnote 4—Amendment history 71

Federal Register of Legislative Instruments F2015C00507

Introductory Chapter 1

Designs Regulations 2004 1

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 1—Introductory

1.01 Name of Regulations

These Regulations are the Designs Regulations 2004.

1.02 Commencement

These Regulations commence on the commencement of sections 3

to 161 of the Designs Act 2003.

1.03 Designs Regulations 1982—repeal

The following Statutory Rules are repealed:

 1982 No. 72

 1984 No. 256

 1986 No. 263

 1988 No. 103

 1989 Nos. 95 and 313

 1990 Nos. 29, 239 and 240

 1991 Nos. 65 and 455

 1992 Nos. 149, 445 and 452

 1993 Nos. 114 and 342

 1994 Nos. 180 and 315

 1995 Nos. 19 and 426

 1996 No. 270

 1997 No. 344

 1998 Nos. 259, 344 and 347

 1999 No. 348

 2001 No. 97

 2002 No. 316

 2004 No. 22.

Federal Register of Legislative Instruments F2015C00507

Chapter 1 Introductory

2 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

1.04 Interpretation

(1) In these Regulations:

Act means the Designs Act 2003.

approved form, for a provision in which the expression appears,

means a form approved by the Registrar for that provision.

approved means, for doing an action, means the means specified

for the action by the Registrar in a notice made under

regulation 11.01A and published by the Registrar.

basic application has the meaning given by subregulation 3.06 (1).

designer has the same meaning as in paragraph 13 (1)(a) of the

Act.

excluded design has the same meaning as in section 23 of the Act.

further design means a design that is disclosed in a design

application, but that has not been identified, by the applicant, as

being a separate design disclosed in the application.

initial application has the same meaning as in section 23 of the

Act.

Official Journal means the Official Journal of Designs

periodically published by the Registrar.

old Act means the Designs Act 1906.

old Regulations means the Designs Regulations 1982.

transitional application has the meaning given by

subregulation 12.03 (6).

(2) For these Regulations, a document is taken to be in the approved

form if it contains all the information that the form requires.

(3) A reference in these Regulations to:

(a) the giving of a notice or other document to the Registrar; or

Federal Register of Legislative Instruments F2015C00507

Introductory Chapter 1

Designs Regulations 2004 3

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) the making of a request or an application to the Registrar;

includes a reference to the filing of the notice, document, request

or application.

1.05 Convention country

For the definition of Convention country in subsection 5A(1) of

the Act, the following countries are prescribed:

(a) a foreign country that is a signatory to the Paris Convention

for the Protection of Industrial Property of 20 March 1883, as

in force from time to time;

(b) a foreign country that is a full member of the World Trade

Organization.

Note 1: For signatories to the Paris Convention for the Protection of Industrial

Property, see www.wipo.int.

Note 2: For full members of the World Trade Organization, see www.wto.org.

1.06 Giving of documents by Registrar

(1) For these Regulations, the Registrar may give a document to a

person by:

(a) making the document available to the person in an electronic

form; and

(b) notifying the person that the document is available.

(2) If the Registrar gives a document to a person, the document is

taken to have been given to the person on the day the document is

dated by the Registrar.

Federal Register of Legislative Instruments F2015C00507

Chapter 2 Design rights, ownership and registrable designs

4 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 2—Design rights, ownership and

registrable designs

2.01 Certain things to be disregarded in deciding whether a design is

new and distinctive

(1) For paragraph 17(1)(a) of the Act, a prescribed circumstance is the

publication or use of the design at:

(a) an official or officially recognised international exhibition

within the meaning of:

(i) Article 11 of the Paris Convention for the Protection of

Industrial Property done at Paris on 20 March 1883, as

in force for Australia on the commencement of this

subregulation; or

(ii) Article 1 of the Convention relating to International

Exhibitions done at Paris on 22 November 1928, as in

force for Australia on the commencement of this

subregulation; or

(b) an international exhibition recognised by the Registrar by

notice published in the Official Journal before the exhibition

begins.

(2) The circumstance mentioned in subregulation (1) is a prescribed

circumstance only if, at the time a design application is made in

respect of the design:

(a) a notice, stating that the design has been exhibited, has been

filed; and

(b) a document, issued by the authority responsible for the

exhibition, that:

(i) identifies the design and the exhibition; and

(ii) states the date of opening of the exhibition; and

(iii) if the first publication or use of the design did not take

place on that date—states the date on which the first

publication or use took place;

Federal Register of Legislative Instruments F2015C00507

Design rights, ownership and registrable designs Chapter 2

Designs Regulations 2004 5

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

has been filed.

(3) For subsection 17(1) of the Act, the prescribed period is 6 months

from the date on which the first publication or use of the design

took place.

Federal Register of Legislative Instruments F2015C00507

Chapter 3 Design applications

Part 3.2 Applications

6 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 3—Design applications

Part 3.2—Applications

3.01 Minimum filing requirements

For subsection 21(2) of the Act, each of the following requirements

is prescribed:

(a) the application must include information that indicates that

what is filed is intended to be a design application;

(b) the application must include information that:

(i) allows the identity of the applicant to be established;

and

(ii) allows the applicant to be contacted;

that appears to be a representation, of each design.

3.02 Applications covering excluded designs

For subsection 23(2) of the Act, the prescribed period:

(a) begins immediately after the Registrar has received the

request to amend the initial application under section 28 of

the Act to exclude the excluded design or designs; and

(b) ends immediately before the earlier of:

(i) the lapse or withdrawal of the initial application; and

(ii) the registration, or publication under section 57 of the

Act, of a design disclosed in the initial application.

3.03 Notice—minimum filing requirements

(1) For subsection 24(3) of the Act, a notice under subsection 24(1) or

(2) of the Act must be sent to:

(a) if the applicant has given to the Registrar an address for

service—that address; or

Federal Register of Legislative Instruments F2015C00507

Design applications Chapter 3

Applications Part 3.2

Designs Regulations 2004 7

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) in any other case—any other contact address given by, or

obtained from, the applicant.

(2) A notice under subsection 24(2) of the Act must:

(a) identify each minimum filing requirement that has not been

met; and

(b) include a direction that the applicant file, within 2 months

from the date of the notice, the additional information

required.

(3) If the minimum filing requirements are not met within the period

mentioned in paragraph (2)(b), the application is taken never to

have been filed.

3.04 Publication of receipt of application

(1) For section 25 of the Act, the details prescribed in relation to each

design application that meets the minimum filing requirements are

the following details for each design disclosed in the application:

(a) the design number;

(b) the name of the applicant or the entitled person;

(d) if applicable:

(i) details about any basic application made in respect of

the design; and

(ii) the design number that was allocated to the excluded

design in the initial application;

(e) if stated in the application—the product or products to which

the design relates.

Note: For a design application in respect of a design excluded from certain

transitional applications, see also regulation 12.03.

(2) The Registrar must publish the details in the Official Journal.

Federal Register of Legislative Instruments F2015C00507

Chapter 3 Design applications

Part 3.2 Applications

8 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

3.05 Filing date

For section 26 of the Act, the filing date of a design application is

the day when the application meets the minimum filing

requirements.

Note: For the filing date of a converted application, see section 160 of the

Act.

3.06 Priority date—designs disclosed in basic applications

(1) In this regulation:

basic application, in respect of a design, means an application for

protection of the design, being an application that is made in a

Convention country in accordance with these Regulations.

(2) For paragraph 27(1)(b) of the Act, if the design application is filed,

within 6 months after the date on which the basic application was

made, by:

(a) the applicant in the basic application; or

(b) the applicant’s assignee; or

applicant’s assignee;

the prescribed date is the day when the basic application was made.

(3) If a copy of the basic application is not filed within 2 months after

the Registrar has made a request (if any) for a copy,

subregulation (2) is taken not to apply to the design.

Note: Under regulation 11.18, a document that is not in English must be

accompanied by a verified translation.

(4) For paragraph 27(1)(b) of the Act, if subregulation (2) does not

apply to the design, the prescribed date is the filing date of the

design application.

(5) If 2 or more basic applications have been made in 1 or more

Convention countries, a reference to the basic application in

subregulation (2) is taken to be a reference to the earlier or earliest

of those applications.

Federal Register of Legislative Instruments F2015C00507

Design applications Chapter 3

Applications Part 3.2

Designs Regulations 2004 9

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Note: Certain applications are to be disregarded for the purpose of this

regulation—see regulation 3.07.

(6) For subregulation (1), an application for protection in respect of a

design is made in a Convention country:

(a) if:

(i) an application for protection in respect of the design has

been made under the Hague Agreement Concerning the

International Deposit of Industrial Designs, done at The

Hague on 6 November 1925; and

(ii) the application sought protection in the Convention

country; or

(b) if:

(i) an application for protection in respect of the design has

been made under the Benelux Designs Convention,

done at Brussels on 25 October 1966 (the Benelux

Convention); and

(ii) the Convention country is a State (however described)

that has consented to be bound by the Benelux

Convention and for which the Benelux Convention is in

force; or

(i) an application for protection in respect of the design has

been made under the terms of the Treaty Establishing

the European Community, done at Rome on 25 March

1957; and

(ii) the Convention country is a State (however described)

that has consented to be bound by the Treaty and for

which the Treaty is in force.

Note: For the priority date of a converted application, see section 160 of the

Act.

3.07 Certain basic applications to be disregarded

(1) This regulation applies if:

Federal Register of Legislative Instruments F2015C00507

Chapter 3 Design applications

Part 3.2 Applications

10 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(a) an application for protection in respect of a design has been

made in a Convention country in accordance with these

Regulations; and

(b) the application has been withdrawn, abandoned or refused

without becoming open to public inspection; and

right of priority in a Convention country under the law of that

country corresponding to regulation 3.06; and

(d) a later application for protection in respect of the design has

been made by the same applicant in the Convention country

in which the earlier application was made.

(2) The applicant may request the Registrar to disregard the earlier

application for the purpose of identifying the basic application

referred to in subregulation 3.06(2).

(3) If the applicant makes a request under subregulation (2):

(a) the Registrar must disregard the earlier application for that

purpose; and

(b) neither the applicant nor any other person is capable of

making use of the earlier application for that purpose.

3.08 Priority date—excluded designs

For paragraph 27(1)(c) of the Act, the priority date of a design that

is an excluded design is the same priority date as it had under the

initial application.

Note: This regulation also applies to a design excluded from certain

transitional applications, see regulation 12.03.

Federal Register of Legislative Instruments F2015C00507

Design applications Chapter 3

Amendment or withdrawal of applications Part 3.3

Designs Regulations 2004 11

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 3.3—Amendment or withdrawal of

applications

3.09 Request for amendment of application

(1) For subsection 28(2) of the Act, the request must:

(a) be in writing; and

(b) be clear that an amendment of a design application is being

requested; and

and

(d) be accompanied by:

(i) a substitute document or representation incorporating

the proposed amendments; or

(ii) a statement setting out the proposed amendments and

the place at which each amendment is proposed to be

made.

(2) If the request is not accompanied by a substitute document or

representation incorporating the proposed amendments, the

applicant must, if directed by the Registrar, file a substitute

document or representation within the time allowed by the

Registrar.

3.10 Disputes between applicants—requests for determinations

For subsection 29(2) of the Act, a request must:

(a) be made in the approved form; and

(b) include a statement of the grounds on which the request is

made.

3.11 Requests for direction specifying persons as applicants or

entitled persons

For subsection 30(4) of the Act, a request must:

Federal Register of Legislative Instruments F2015C00507

Chapter 3 Design applications

Part 3.3 Amendment or withdrawal of applications

12 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(a) be made in the approved form; and

(b) include a statement of the grounds on which the request is

made.

3.12 Publication of certain details of amended applications

(1) This regulation applies in relation to a design application if, as a

result of the design application having been amended under Part 3

of Chapter 3 of the Act, any of the details published under

section 25 of the Act in relation to the application has changed.

(2) For section 31 of the Act, the details prescribed are the following

details for each design in relation to which the published details

has changed:

(a) the design number;

(b) for each detail that has changed—the detail as amended.

3.13 Withdrawal of designs and design applications

(1) For subsection 32(1) of the Act, the prescribed period:

(a) begins immediately after the design application is filed; and

(b) ends immediately before a design disclosed in the design

application is registered or published.

(2) For subsection 32(2) of the Act, the prescribed period:

(a) begins immediately after the design application is filed; and

(b) ends immediately before the design to be withdrawn is

registered or published.

(3) If a design is withdrawn, including a design disclosed in a design

application that is withdrawn, the Registrar must publish the design

number in the Official Journal.

Federal Register of Legislative Instruments F2015C00507

Design applications Chapter 3

Lapsing of applications Part 3.4

Designs Regulations 2004 13

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 3.4—Lapsing of applications

3.14 Period within which application lapses

(1) For paragraph 33(1)(a) of the Act, the prescribed period is:

(a) if the design is an excluded design—the period:

(i) starting on the day when the request to exclude the

design is filed; and

(ii) ending on the day when the application is filed; or

(b) if the design is a design mentioned in section 55 of the Act,

and the period of 6 months from the priority date of the

design has expired when an application is filed as mentioned

in that section—the day when the application is filed; or

design.

Note: Paragraph 3.14(1)(a) also applies to a design excluded from certain

transitional applications, see regulation 12.03.

(2) For paragraph 33(1)(b) of the Act, the prescribed period is 2

months from the later of:

(a) the date of the first notice given by the Registrar under

section 41 of the Act in relation to the design or designs in

respect of which registration is requested; and

(b) the date of the first notice given by the Registrar under

section 57 of the Act in relation to the design or designs in

respect of which publication is requested.

3.15 Form of notice

For subsection 33(4) of the Act, the notice must:

(a) be in the form of a notice published in the Official Journal;

and

(b) include the design number for each design disclosed in the

application that has not been registered or published.

Federal Register of Legislative Instruments F2015C00507

Chapter 4 Registration or publication of designs

Part 4.2 Requests for registration or publication

14 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 4—Registration or publication of

designs

Part 4.2—Requests for registration or publication

4.01 Requests for registration or publication

(1) This regulation does not apply to a request mentioned in section 37

or subsection 38(2) of the Act or in subregulation 12.03(2).

(2) For paragraph 35(2)(b) of the Act, the prescribed period is:

(a) 6 months from the priority date of the design; or

(b) if the design is a design mentioned in section 55 of the Act,

and the period of 6 months has expired when an application

is filed as mentioned in that section—the day when the

application is filed.

(3) For subsection 35(3) of the Act, the request must be made in the

approved form.

4.02 Subsequent requests for registration—applications in respect of

more than 1 design

(1) For paragraph 36(2)(a) of the Act, the Registrar may determine that

the applicant may make a request (a subsequent request) for

registration of a design (an other design) in respect of which no

request for registration was made in the original request only if:

(a) the applicant can satisfy the Registrar that it was only

because of an error or omission by the applicant or the

applicant’s agent that a request was not made for registration

of the other design; and

(b) the subsequent request is made before any design disclosed

in the design application is registered or published.

(2) In this regulation:

Federal Register of Legislative Instruments F2015C00507

Registration or publication of designs Chapter 4

Requests for registration or publication Part 4.2

Designs Regulations 2004 15

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

original request means the first request made under section 35 of

the Act in relation to the design application in which the other

design is disclosed.

4.03 Period within which replacements of request may be made

For subsection 38(2) of the Act, the prescribed period:

(a) begins immediately after the request for registration of the

design is made; and

(b) ends immediately before the design is registered.

Federal Register of Legislative Instruments F2015C00507

Chapter 4 Registration or publication of designs

Part 4.3 Registration

16 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 4.3—Registration

4.04 Formalities check—applications in respect of 1 design only

(1) For paragraph 39(2)(a) of the Act, the formalities check is

confirmation, by the Registrar, that:

(a) the design application is in the approved form; and

(b) the design application meets the requirements of

regulation 11.18; and

relation to which the design is sought to be registered

sufficiently to enable each product to be classified in

accordance with the Locarno Agreement; and

(d) for a design application mentioned in subsection 23(2) of the

Act—the design application identifies the design number that

was allocated to the excluded design in the initial application;

and

(e) if a specimen is filed as a representation of the design—the

specimen is of a kind that:

(i) can be readily mounted in a flat position by affixing it to

a paper of the size required under paragraph 1(1)(e) of

Schedule 2; and

(ii) can be stored without damage to other documents; and

(iii) when mounted, is presented in a way that allows any

number of copies of the specimen to be reproduced

directly by photocopying, digital scanning,

microfilming and photography; and

(f) the design application includes 5 copies of each

representation of the design; and

(g) the design application complies substantially with the formal

requirements set out in Schedule 2.

Note: For a design application in respect of a design excluded from certain

transitional applications, see also regulation 12.03.

Federal Register of Legislative Instruments F2015C00507

Registration or publication of designs Chapter 4

Registration Part 4.3

Designs Regulations 2004 17

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(2) If the Registrar is not satisfied with the matter mentioned in

paragraph (1)(e), the Registrar may, in giving a notice under

section 41 of the Act, require the applicant to file another

representation that complies with the paragraph.

4.05 Formalities check—applications in respect of more than 1

design

(1) For paragraph 40(2)(c) of the Act, the formalities check is

confirmation, by the Registrar, that:

(a) the design application is in the approved form; and

(b) the design application meets the requirements of

regulation 11.18; and

or products in relation to which the design is sought to be

registered sufficiently to enable each product to be classified

in accordance with the Locarno Agreement; and

(d) for a design application mentioned in subsection 23(2) of the

Act—the design application identifies the design number that

was allocated to the excluded design in the initial application;

and

(e) if a specimen is filed as a representation of a design—the

specimen is of a kind that:

(i) can be readily mounted in a flat position by affixing it to

a paper of the size required under paragraph 1(1)(e) of

Schedule 2; and

(ii) can be stored without damage to other documents; and

(iii) when mounted, is presented in a way that allows any

number of copies of the specimen to be reproduced

directly by photocopying, digital scanning,

microfilming and photography; and

(f) the design application includes 5 copies of each

representation of each design disclosed in the application;

and

Federal Register of Legislative Instruments F2015C00507

Chapter 4 Registration or publication of designs

Part 4.3 Registration

18 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(g) the number of designs disclosed in the design application is

the number of designs identified, by the applicant, as being

separate designs disclosed in application; and

(h) the design application complies substantially with the formal

requirements set out in Schedule 2.

Note: For a design application in respect of a design excluded from certain

transitional applications, see also regulation 12.03.

(2) If the applicant has requested registration of some, but not all, of

the designs disclosed in the design application, the formalities

check is confirmation, by the Registrar, that the matters specified

in subregulation (1) are satisfied in relation to the part or parts of

the application relating to the design or designs covered by the

request.

(3) If the Registrar is not satisfied with the matter mentioned in

paragraph (1)(e), the Registrar may, in giving a notice under

section 41 of the Act, require the applicant to file another

representation that complies with the paragraph.

4.06 Registrar must refuse to register certain designs

For paragraph 43(1)(a) of the Act, the following classes of designs

are prescribed:

(a) medals;

(b) designs of a kind that the Registrar must, under

subregulation 2(4) of the Protection of Word ‘Anzac’

Regulations, refuse to register;

Crimes (Currency) Act 1981;

(d) designs that are scandalous, or might reasonably be taken to

be scandalous;

(e) the Arms, or a flag or seal, of the Commonwealth or of a

State or Territory;

(f) the Arms or emblems of:

(i) a State or Territory; or

(ii) a city or town in the Commonwealth; or

Federal Register of Legislative Instruments F2015C00507

Registration or publication of designs Chapter 4

Registration Part 4.3

Designs Regulations 2004 19

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(iii) a public authority or public institution in Australia;

(g) the armorial bearings, flags, State emblems or other signs of

another country.

4.07 Period within which Registrar must register certain designs

after refusal

For section 44 of the Act, the prescribed period is 1 month from the

date on which the Registrar was notified of the revocation of the

order.

Note: A similar arrangement is made in regulation 8.02.

4.08 Certificate of registration and notice of registration

(1) For subsection 45(3) of the Act, the certificate must include the

following details in relation to the design:

(a) the registration number;

(b) the filing date of the design application first disclosing the

design;

(d) the name and address of the registered owner;

(e) the product or products to which the design relates;

(f) the name of the designer;

(g) if a statement of newness and distinctiveness has been

provided to the Registrar—that statement;

(h) if applicable:

(i) details about any basic application made in respect of

the design; and

(ii) the design number that was allocated to the excluded

design in the initial application.

Note 1: A statement of newness and distinctiveness is described in

paragraph 19(2)(b) of the Act.

Note 2: For a design application in respect of a design excluded from certain

transitional applications, see also regulation 12.03.

(2) For subsection 45(4) of the Act, the notice must:

Federal Register of Legislative Instruments F2015C00507

Chapter 4 Registration or publication of designs

Part 4.3 Registration

20 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(a) be in the form of a notice published in the Official Journal;

and

(b) include the following details in relation to the design:

(i) the design number;

(ii) the registration number;

(iii) the date on which the design was registered;

(iv) the filing date of the design application first disclosing

the design;

(v) if applicable:

(A) details about any basic application made in

respect of the design; and

(B) the design number that was allocated to the

excluded design in the initial application;

(vi) the product or products to which the design relates;

(vii) the Locarno Agreement classification of the product or

each product;

(viii) if a statement of newness and distinctiveness has been

provided to the Registrar—that statement;

(ix) the name and address of the registered owner;

(x) the name of the designer.

Note 1: A statement of newness and distinctiveness is described in

paragraph 19(2)(b) of the Act.

Note 2: For a design application in respect of a design excluded from certain

transitional applications, see also regulation 12.03.

4.09 Renewal of registration

(1) For subsection 47(2) of the Act, the prescribed period is the period

of 5 years and 6 months that begins at the start of the term of

registration of the design.

Note: If a renewal fee is paid after 5 years, it will attract the fee set out in

paragraph (b) of column 3 of item 5 of Schedule 4.

(2) For subsection 47(3) of the Act, the application must:

(a) be clear that renewal of the registration of the design is being

requested; and

Federal Register of Legislative Instruments F2015C00507

Registration or publication of designs Chapter 4

Registration Part 4.3

Designs Regulations 2004 21

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) include the registration number of the design; and

4.10 Surrender of registration

For paragraph 49(3)(c) of the Act, the offer must include:

(a) a statement that an offer is made to surrender the registration

of the design; and

(b) the registration number of the design.

Note: Under subsection 49(2) of the Act, if there is more than 1 registered

owner, the offer must be made by all the registered owners.

4.11 Revocation of registration on surrender

(1) For paragraph 50(2)(a) of the Act, each other person who is entered

on the Register as having an interest in the design is prescribed.

(2) For paragraph 50(2)(b) of the Act, a person mentioned in

subregulation (1) may make a submission:

(a) in writing; and

(b) within 1 month after the date of the notice under

paragraph 50(2)(a) of the Act.

(3) The Registrar must also publish, in the Official Journal, a notice of

the offer received under section 49 of the Act.

(4) If an interested person wishes to be heard in relation to the offer, he

or she must, within 1 month after the date of publication of the

notice mentioned in subregulation (3), give notice to the Registrar

of his or her wish to be heard.

(5) The Registrar may, as a preliminary issue, hear and determine the

question whether a person is an interested person.

(6) If an interested person gives notice to the Registrar under

subregulation (4), the Registrar must give the person an

opportunity to be heard before exercising his or her powers under

subsection 50(3) of the Act.

Federal Register of Legislative Instruments F2015C00507

Chapter 4 Registration or publication of designs

Part 4.3 Registration

22 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

4.12 Revocation of registration on grounds relating to entitled

persons

For subsection 51(2) of the Act, the application must:

(a) be made in the approved form; and

(b) include a statement of the grounds on which the application

is made.

4.13 Notice of revocation of registration

For subsection 52(4) of the Act, the notice must:

(a) be in the form of a notice published in the Official Journal;

and

(b) include the registration number of the design.

4.14 Applications by entitled persons after revocation following

surrender of registration

For paragraph 54(1)(b) of the Act, an application must be in

writing.

Federal Register of Legislative Instruments F2015C00507

Registration or publication of designs Chapter 4

Publication Part 4.4

Designs Regulations 2004 23

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 4.4—Publication

4.15 Publication of a design

(1) For subsection 57(2) of the Act, the documents:

(a) must include the applicant’s name and the designer’s name;

and

(b) must meet the requirements of regulation 11.18; and

out in Schedule 2; and

(d) must not disclose a design that would have been refused

registration under paragraph 43(1)(b), (c) or (d) of the Act;

and

(e) must not disclose a design that is of a class prescribed in

paragraph 4.06(b), (c) or (d).

(2) If the design application is in respect of more than 1 design, the

requirements specified in subregulation (1) are to be satisfied in

relation to the part or parts of the application relating to the design

or designs covered by the request.

Federal Register of Legislative Instruments F2015C00507

Chapter 5 Examination of designs

24 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 5—Examination of designs

5.01 Requirements for request for examination of design

For subsection 64(1) of the Act, the following requirements are

prescribed:

(a) the request must be made in the approved form;

(b) if the request is made by a person other than the registered

owner, and contains any material in relation to the newness

and distinctiveness of the design—the material must be

provided in duplicate.

5.02 Grounds for revocation of registration of design

For paragraph 65(2)(b) of the Act, a prescribed ground is that,

under section 43 of the Act, the design should not have been

registered.

5.03 Examination of design—procedures

(1) For paragraph 65(3)(a) of the Act, the procedures set out in this

regulation are prescribed for the conduct of an examination of a

design.

(2) If, after considering under subsection 65(1) of the Act whether a

ground for revocation under subsection 65(2) of the Act exists, the

Registrar is satisfied that a ground for revocation has been made

out, the Registrar must give notice to the registered owner as

required under subsection 66(2) of the Act.

Note: See section 67 of the Act for what is to happen if the Registrar is

satisfied that a ground for revocation has not been made out.

(3) A registered owner may respond to a notice given under

subsection 66(2) of the Act (including a further notice mentioned

in subregulation (6)) by:

(a) contesting, in writing, the ground for revocation; or

Federal Register of Legislative Instruments F2015C00507

Examination of designs Chapter 5

Designs Regulations 2004 25

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) requesting amendment of the Register as provided under

subsection 66(3) of the Act.

(4) If the registered owner responds by contesting the ground in

writing, the Registrar must reconsider whether a ground for

revocation under subsection 65(2) of the Act exists, taking into

account the written submissions made by the registered owner.

(5) If the registered owner responds by requesting amendment of the

revocation would be removed if the Register were amended as

proposed in the request.

(6) If:

(a) after the reconsideration mentioned in subregulation (4), the

Registrar remains satisfied that a ground for revocation has

been made out; or

(b) after the consideration mentioned in subregulation (5), the

Registrar is satisfied that the ground would not be removed if

the Register were amended as proposed;

the Registrar must:

subsection 66(2) of the Act; or

(d) give the registered owner a reasonable opportunity to be

heard under paragraph 68(4)(a) of the Act.

(7) A further notice mentioned in subregulation (6) must, in addition to

stating that a ground for revocation has been made out, include a

statement to the following effect:

(a) if the registered owner has contested the ground in writing—

that the Registrar has taken into account the written

submissions made by the registered owner;

(b) if the registered owner has requested amendment of the

Note: See section 67 of the Act for what is to happen if the Registrar is

satisfied that a ground for revocation has not been made out or that

Federal Register of Legislative Instruments F2015C00507

Chapter 5 Examination of designs

26 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

any such ground would be removed if the Register were amended as

proposed.

(8) If the request for examination was made by a person other than the

registered owner, the Registrar must send a copy of the notice

given under subsection 66(2) of the Act (including a further notice

mentioned in subregulation (6)) to the person who requested the

examination.

Note: See section 68 of the Act for what is to happen if the Registrar

remains satisfied that a ground for revocation has been made out and

the ground would not be removed if the Register were amended as

proposed.

5.04 Period in which examination of a design must be completed

For paragraph 65(3)(b) of the Act, the prescribed period is worked

out as follows:

(a) if a notice is given under subsection 66(2) of the Act in

relation to the examination, the prescribed period is 6 months

after the date of the first notice;

(b) if:

(i) a person provides material under section 69 of the Act;

and

(ii) the Registrar gives the registered owner written notice

under subsection 66(2) of the Act of a ground of

revocation, based on that material;

the prescribed period is whichever of the following periods

ends later:

(iii) 6 months after the date of the first notice under

subsection 66(2) of the Act in relation to the

examination;

(iv) 3 months after the date of the notice under

subsection 66(2) of the Act that first raises the ground of

revocation;

(i) the Registrar discontinues the examination of the design

in accordance with subsection 63(4) of the Act; or

Federal Register of Legislative Instruments F2015C00507

Examination of designs Chapter 5

Designs Regulations 2004 27

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(ii) if a hearing described in section 67 or 68 of the Act is

requested; or

(iii) if an appeal is made to the Federal Court, the Federal

Magistrates Court or the Federal Circuit Court of

Australia against a decision of the Registrar under

section 67 or 68 of the Act;

the prescribed period is the period determined by the

Registrar to allow the examination to be completed.

5.05 Amendment of registration

(1) For subsection 66(4) of the Act:

(a) the request must be in writing; and

(b) the request must make it clear that an amendment of the

amendments; and

(d) the request must be accompanied by:

(i) a substitute document or representation incorporating

the proposed amendments; or

(ii) a statement setting out the proposed amendments and

the place at which each amendment is proposed to be

made; and

(e) if:

(i) the request is not accompanied by a substitute document

or representation incorporating the proposed

amendments; and

(ii) the Registrar directs the registered owner under

paragraph (2)(b) to file a substitute document;

the substitute document must have been filed in accordance

with the direction.

(2) For subsection 66(5) of the Act:

(a) the Registrar must notify the registered owner if:

(i) the request does not meet the requirements mentioned in

subregulation (1); or

Federal Register of Legislative Instruments F2015C00507

Chapter 5 Examination of designs

28 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(ii) the proposed amendment is of a kind prohibited under

subsection 66(6) of the Act; and

(b) if the request is not accompanied by a substitute document or

representation incorporating the proposed amendments, the

Registrar may direct the registered owner to file a substitute

document or representation within the time allowed by the

Registrar.

5.06 Certificate of examination and notice of examination

(1) For paragraph 67(3)(a) of the Act, the certificate must include:

(a) the registration number of the design; and

(b) the date of certification.

(2) For paragraph 67(3)(c) of the Act, the notice must:

(a) be in the form of a notice published in the Official Journal;

and

(b) include the following details in relation to the design:

(i) the registration number;

(ii) the date of certification.

(3) In this regulation:

date of certification means the date on which the Registrar is

satisfied that a certificate of examination is to be issued under

subsection 67(3) of the Act in respect of the design.

5.07 Revocation of registration after examination

For subsection 68(3) of the Act, the notice must:

(a) be in the form of a notice published in the Official Journal;

and

(b) include the following details in relation to the design:

(i) the registration number;

(ii) the date on which the design was revoked.

Federal Register of Legislative Instruments F2015C00507

Examination of designs Chapter 5

Designs Regulations 2004 29

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

5.08 Material provided to Registrar

For subsection 69(2) of the Act, the material must:

(a) be provided in duplicate; and

(b) be accompanied by the approved form; and

material.

Note: Under regulation 11.18, a document that is not in English must be

accompanied by a verified translation.

Federal Register of Legislative Instruments F2015C00507

Chapter 7 Jurisdiction and powers of courts

30 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 7—Jurisdiction and powers of courts

7.01 Application to court for compulsory licence

For subsection 90(1) of the Act, the prescribed period is 3 years

from the date of registration of the design.

7.02 Revocation of registration after grant of compulsory licence

For subsection 92(1) of the Act, the prescribed period is 2 years

from the date on which the licence, or the first licence (if more than

1), was granted under section 90 of the Act in relation to the

design.

Federal Register of Legislative Instruments F2015C00507

The Crown Chapter 8

Designs Regulations 2004 31

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 8—The Crown

8.01 Acquisition of design by the Commonwealth

For subsection 106(3) of the Act, notice of the acquisition must be

published:

(a) in the Official Journal; and

(b) in the Gazette.

Note: The Commonwealth of Australia Gazette is available in hard copy and

online.

8.02 Period within which designs must be registered or published

after prohibition

For subsection 108(4) of the Act, the prescribed period is 1 month

from the date on which the Registrar was made aware of the

revocation of the order.

Note: A similar arrangement is made in regulation 4.07.

Federal Register of Legislative Instruments F2015C00507

Chapter 9 The Register

32 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 9—The Register

9.01 Other particulars to be entered in the Register

For paragraph 111(2)(e) of the Act, the following particulars are

prescribed:

(a) the address for service of the registered owner;

(b) the name of each other person who has an interest in the

design;

(d) if a statement of newness and distinctiveness was included in

the application—that fact.

9.02 Inspection of Register

For subsection 113(1) of the Act, the prescribed times, in relation

to the Designs Office or a sub-office of the Designs office, are

from 9 am to 5 pm on Monday to Friday other than a public

holiday:

(a) in the place where the Designs Office or the sub-office is

located; or

(b) for the purposes of the Australian Public Service in that

place.

9.03 Amendments of Register to record changes of ownership

(1) For subsection 114(3) of the Act, the prescribed period is 1 month

from the date of the notice under paragraph 114(3)(a) of the Act.

(2) For subsection 114(4) of the Act, the request must:

(a) be made in the approved form; and

(b) be accompanied by satisfactory evidence of:

(i) the assignment of the interest in the design; or

(ii) the person’s interest in the design by devolution by will

or by operation of law.

Federal Register of Legislative Instruments F2015C00507

The Register Chapter 9

Designs Regulations 2004 33

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

9.04 Notice specifying amendments to Register

For paragraph 116(b) of the Act, the Registrar must publish a

notice in the Official Journal.

9.05 Correction of Register

(1) The Registrar may, of his or her own motion, amend an entry in the

(2) The Registrar may, on request made in the approved form, amend

an entry in the Register:

(a) to correct a clerical error or an obvious mistake; or

(b) if a name or an address entered in the Register has been

changed—to change the name or address.

(3) If the Registrar proposes to amend an entry in the Register, the

Registrar may give notice of the proposed amendment to a person

who is entered in the Register as having an interest in the design.

(4) If a proposed amendment of an entry would materially alter the

meaning or scope of the entry, the Registrar must publish, in the

Official Journal, a notice of the request to amend the entry.

(5) A person may oppose the amendment by filing a notice of

opposition, in an approved form, within one month from the

publication of the notice under subregulation (4).

Note: For the circumstances in which an extension of time can be sought,

see section 137 of the Act.

(6) The Registrar must give a copy of the notice of opposition to the

person who requested the amendment as soon as practicable.

(7) If the amendment is not opposed, the Registrar must amend the

entry as requested.

(8) If the amendment is opposed, the Registrar must amend the entry if

the Registrar decides to do so, subject to a decision of a tribunal or

prescribed court in relation to the opposition.

Federal Register of Legislative Instruments F2015C00507

Chapter 10 Administration

34 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 10—Administration

10.01 Delegation by Registrar

For subsection 124(1) of the Act, the prescribed classes of

employees are:

(a) for any of the powers or functions of the Registrar under the

Act (other than the powers or functions under paragraphs

127(1)(a) and (c) of the Act)—an employee employed at, or

performing duties at, any of the following classifications:

(i) Executive Level 2;

(ii) Executive Level 1;

(iii) APS level 6;

(iv) APS level 5;

(v) APS level 4;

(vi) APS level 3;

(vii) APS level 2; and

Note: Under paragraphs 127(1)(a) and (c) of the Act, the Registrar may

summon witnesses and require the production of documents or

articles.

(b) for all or any of the powers or functions of the Registrar

under the Olympic Insignia Protection Act 1987—an

employee employed at, or performing the duties at, any of the

following classifications:

(i) Executive Level 2;

(ii) Executive Level 1;

(iii) APS level 6.

Note: For the meaning of employee, see section 5 of the Act.

10.02 Costs (Act s 127)

(1) A party to proceedings before the Registrar may apply to the

Registrar, in the approved form, for an award of costs in respect of

the proceedings.

Federal Register of Legislative Instruments F2015C00507

Administration Chapter 10

Designs Regulations 2004 35

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(2) The application must be made:

(a) during the proceedings; or

(b) within 3 months from:

(i) the day when the Registrar makes a decision that ends

the proceedings; or

(ii) the date of the Registrar’s notice to the party that the

proceedings have been discontinued.

(3) The Registrar may award costs only in respect of a matter

mentioned in Schedule 3.

(4) Before awarding costs for an amount other than for an amount

mentioned in Schedule 3 in respect of the proceedings, the

Registrar must give each party to the proceedings a reasonable

opportunity to be heard in relation to the award of costs.

(5) If a bill of costs is to be filed in relation to the proceedings, the bill

must be filed within 3 months from the day when the costs are

awarded.

(6) The amount of costs must be taxed, allowed and certified, in

accordance with Schedule 3, by the Registrar.

(7) The Registrar may review the taxation of costs carried out by a

delegate of the Registrar or a person authorised to act for the

Registrar.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.2 Fees

36 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 11—Miscellaneous

Part 11.2—Fees

11.01 Fees payable

(1) For subsection 130(1) of the Act, the fee to be paid for a matter

mentioned in an item in Schedule 4 is specified in the item.

(2) For subsection 130(3) of the Act, the fee mentioned in an item in

Schedule 4 is payable as set out in this regulation.

Who pays

(3) A fee specified in an item is payable by the person (if any) who is

specified in the item as the person by whom the fee is payable.

To whom is it payable

(4) The fee is payable to the Registrar.

When is it payable

(5) The fee is payable at the following time:

(a) if it is for filing an application, request or other document—

when the application, request or other document is filed;

(b) if it is for appearing at a hearing:

(i) for the first day—immediately before the hearing; and

(ii) for each day or part of a day after the first day—

immediately after the completion of the hearing.

How is it paid

(6) The fee must be paid in the manner that the Registrar reasonably

directs.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Fees Part 11.2

Designs Regulations 2004 37

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Transitional

(7) Paragraph 12(a) of Schedule 4, as in force on 1 July 2012, does not

apply to a person in relation to a hearing held after the

commencement of this subregulation if:

(a) the person requests the hearing, and pays the fee mentioned

in item 11 of Schedule 4, before the commencement of this

subregulation; or

(b) the person pays the fee mentioned in paragraph 12(a) of of

Schedule 4 for the hearing before the commencement of this

subregulation; or

for which the person paid the fee mentioned in item 10 of

Schedule 4 before the commencement of this subregulation.

(8) Paragraph 12(b) of Schedule 4, as in force on 1 July 2012, does not

apply to a person in relation to a hearing held after the

commencement of this subregulation if the person pays the fee

mentioned in paragraph 12(b) of Schedule 4 for the hearing before

the commencement of this subregulation.

11.01A Approved means

(1) The Registrar may, by notice published by the Registrar, specify

one or more means for doing an action mentioned in Schedule 4.

Examples of actions:

1 Filing a request.

2 Filing an application.

(2) The means may be an electronic means or any other means.

Note: The means become approved means when they are published.

11.02 Failure to pay—fee for filing a design application

(1) This regulation applies if:

(a) the fee mentioned in item 1 in Schedule 4 is not paid on the

day when it is payable; and

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.2 Fees

38 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) within 1 month after that day, the Registrar invites the

applicant to pay the fee within 2 months after the date of the

invitation; and

(2) The application lapses, or the registration of each design disclosed

in the application that has been registered ceases, at the end of the

2 month period.

11.03 Failure to pay—fee for filing a request for registration

covering a further design

(1) This regulation applies if:

(a) the fee mentioned in item 2 in Schedule 4 is not paid on the

day when it is payable; and

(b) within 1 month after the date of the first notice given under

section 41 of the Act in relation to the further design, the

Registrar invites the applicant to pay the fee within 2 months

after the date of the invitation; and

(2) The application lapses, or the registration of each design disclosed

in the application that has been registered ceases, at the end of the

2 month period.

11.04 Failure to pay—fee payable by the registered owner for filing

a request for examination

(1) This regulation applies if:

(a) the fee mentioned in item 3 in Schedule 4 is not paid on the

day when it is payable; and

(b) within 1 month after that day, the Registrar invites the

registered owner to pay the fee within 2 months after the date

of the invitation; and

(2) The registration of the design ceases, at the end of the 2 month

period.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Fees Part 11.2

Designs Regulations 2004 39

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

11.05 Failure to pay—fee payable by the registered owner in

relation to a request for examination filed by another

person

(1) This regulation applies if:

(a) the fee mentioned in paragraph (b) in column 3 of item 4 in

Schedule 4 is not paid on the day when it is payable; and

(b) within 1 month after the fee mentioned in paragraph (a) of

item 4 in Schedule 4 is paid, the Registrar invites the

registered owner to pay the fee within 2 months after the date

of the invitation; and

(2) The registration of the design ceases at the end of the 2 month

period.

11.06 Failure to pay—certain other fees for filing

(1) This regulation applies if:

(a) the fee mentioned in:

(i) paragraph (a) in column 3 of item 4 in Schedule 4; or

(ii) item 7, 8, 9 or 10 in Schedule 4;

is not paid on the day when it is payable; and

(b) within 1 month after the fee is payable, the Registrar invites

the person who files the request, application or notice to pay

the fee within 2 months after the date of the invitation; and

(2) The request, application or notice is taken not to have been filed.

11.07 Failure to pay—fee for requesting a hearing

(1) This regulation applies if the fee mentioned in item 11 in

Schedule 4 is not paid when it is payable.

(2) No hearing as requested is to be held until the fee has been paid.

(3) If:

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.2 Fees

40 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(a) within 1 month after the fee is payable, the Registrar invites

the person who files the request to pay the fee:

(i) within 2 months after the date of the invitation; or

(ii) if the date of the hearing occurs before the 2 months

period—before the date of the hearing; and

(b) the fee is not paid in accordance with the Registrar’s

invitation;

the request is taken not to have been filed.

11.08 Failure to pay—fee for appearing at a hearing

If the fee mentioned in paragraph (a) in column 3 of item 12 in

Schedule 4 is not paid when it is payable, a person cannot appear at

the hearing.

11.09 Failure to pay—fees for requesting supply of documents by

the Registrar

(1) This regulation applies if the fee mentioned in item 13, 14, 15 or

16 in Schedule 4 is not paid when it is payable.

(2) The Registrar must not process the request until the fee has been

paid.

(3) If:

(a) the Registrar invites the person who files the request to pay

the fee within 2 months after the date of the invitation; and

(b) the fee is not paid within the 2 month period;

the request is taken not to have been filed.

11.10 Consequences if Registrar does not invite payment

(1) This regulation applies if:

(a) the fee mentioned in item 1, 2, 3, 4, 7, 8, 9 or 10 in

Schedule 4 is not paid when it is payable; and

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Fees Part 11.2

Designs Regulations 2004 41

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) the Registrar does not give the invitation mentioned in

regulation 11.02, 11.03, 11.04, 11.05 or 11.06 within the time

mentioned in that regulation for giving the invitation.

(2) The request, application or notice is to be treated as if the fee had

been paid when it was payable.

11.11 Exemption from fees (Act s 149)

The Registrar may exempt a person from the payment of the whole

or any part of a fee, if the Registrar is satisfied on reasonable

grounds that the action is justified having regard to all the

circumstances.

11.12 Recovery of fees

A fee payable under these Regulations is recoverable as a debt due

to the Commonwealth.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.5 Extensions of time

42 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 11.5—Extensions of time

11.13 Extensions of time for doing a relevant act

(1) For subsection 137(2) of the Act, an application must:

(a) be made in the approved form; and

(b) be accompanied by a declaration setting out the grounds on

which the application is made.

(1A) Subregulation (1B) applies if:

(a) an application for an extension of time for doing a relevant

act is made under subsection 137(2) of the Act; and

(b) the relevant act has not been done; and

(1B) If the Registrar grants the application, the Registrar must extend

the time to include the period from the day on which the notice of

opposition is filed to the end of:

(a) if an application is made to the AAT for a review of a

decision of the Registrar—the day when the application is

withdrawn or finally dealt with or determined; or

(b) in any other case—21 days after the end of the day on which

the Registrar decides the application.

(2) For subsection 137(4) of the Act, the Registrar must advertise an

application in the Official Journal.

(3) For subsection 137(5) of the Act, the person must file a notice of

opposition, in an approved form, within one month from the

advertisement of the application.

(3A) The Registrar must give a copy of the notice of opposition to the

person who applied for the extension as soon as practicable.

(4) If the Registrar grants an extension of time under section 137 of the

Act, the Registrar must publish details of the extension in the

Official Journal.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Extensions of time Part 11.5

Designs Regulations 2004 43

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

11.14 Consequence of extension—notice of restoration

For paragraph 138(2)(b) of the Act, the Registrar must publish a

notice in the Official Journal.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.6 Other

44 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 11.6—Other

11.15 Agents (Act s 141)

(1) This regulation applies if a person (an agent) acts on behalf of

another person (the principal).

(2) If the agent signs a document on behalf of the principal, the agent

must note that fact (including the principal’s name) on the

document.

(3) If the agent is not a legal practitioner, he or she must not do the

following on behalf of the principal:

(a) prepare any document that is to be filed in, or issued from, a

court;

(b) transact business, or conduct proceedings, in a court.

11.16 Right of lien of registered patent attorneys (Act s 142)

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.

11.18 Documents to be in English

(1) An approved form being filed must be in English.

(2) Any other document being filed must:

(a) be in English; or

(b) if it is not in English—be accompanied by a translation of the

document into English that has with it a certificate of

verification.

(3) However, subregulation (2) does not apply to text that forms part

of a design.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Other Part 11.6

Designs Regulations 2004 45

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(4) In this regulation:

certificate of verification, in relation to a translation, 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.

11.19 Service of documents

(1) If provision is made in an approved form to state an address for

service, the person completing the form must state:

(a) an address in Australia at which a document under the Act or

these Regulations may be given to him or her personally or to

the person specified in the form as his or her representative;

(b) another address in Australia to which it is practicable and

reasonable for Australia Post, or a person acting on behalf of

Australia Post, to deliver mail.

(2) A person may file notice of a change of his or her address for

service to another address that complies with paragraph (1)(a) or

(b).

(3) If a notice of opposition is filed, a party to the opposition

proceedings who has filed a notice under subregulation (2) must

serve a copy of the notice on each other party to the proceedings.

(4) If a person serves a document on a person other than the Registrar,

he or she must, as soon as practicable after serving the document

on the other person, file:

(a) a notice of the service in the approved form; and

(b) a copy of the document served.

11.20 Address for correspondence

(1) If provision is made in an approved form to state an address for

correspondence, the person completing the form may state an

address to which all correspondence from the Registrar can be sent.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.6 Other

46 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(2) A person may file a notice of change of his or her address for

correspondence.

(3) The address for correspondence need not be in Australia.

11.21 Death of applicant or registered owner (Act s 146, s 147)

(1) This regulation applies to:

(a) a legal representative who wishes to proceed with the

application in accordance with section 146 of the Act; or

(b) a person who wishes to have the Register amended in

accordance with section 147 of the Act.

(2) The legal representative or the person must file:

(a) a request in the approved form; and

(b) any other document that the Registrar reasonably considers to

be necessary to support the request.

11.22 Exercise of discretionary powers by Registrar

(1) The Registrar must give a person an opportunity to be heard before

exercising a discretionary power under these Regulations adversely

to the person.

Note: See section 148 of the Act for a similar provision.

(2) For section 148 of the Act and subregulation (1), the Registrar

must give the person an opportunity to be heard by:

(a) asking the person for written submissions; or

(b) notifying the person that, on request to the Registrar, the

person may be heard by way of an oral hearing on a date, and

at a time and place, determined by the Registrar; or

hearing.

(3) The Registrar may exercise the discretionary power if the person:

(a) notifies the Registrar that the person does not want to be

heard; or

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Other Part 11.6

Designs Regulations 2004 47

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) does not file written submissions if requested under

subregulation 11.23(1); or

subregulation 11.23(2).

(4) If the Registrar exercises discretionary power in any of the

circumstances mentioned in subregulation (3), the Registrar must

notify the person of the Registrar’s decision.

11.23 Written submissions and oral hearings

Written submissions

(1) If the Registrar decides that a person may be heard by way of

written submissions, the Registrar must:

(a) notify the person of the period in which the submissions must

be filed (being a period of at least 10 business days); and

(b) decide the matter after considering the written submissions;

and

exercise of the discretionary power.

Oral hearings

(2) If the Registrar decides that a person may be heard by way of an

oral hearing, the Registrar must give notice of the date, time and

place of the hearing to the person at least 10 business days before

the day the hearing is to begin.

(3) The Registrar may adjourn an oral hearing from time to time or

from place to place by notifying the person.

(4) The Registrar may hold an oral hearing in which:

(a) a person appears in person; or

(b) a person participates by telephone or other means of

telecommunications that the Registrar reasonably allows.

(5) In addition to the Registrar’s other powers, the Registrar may

direct a person to provide a written summary of submissions.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.6 Other

48 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(6) The Registrar must notify a person who appears at the hearing of

the Registrar’s decision in relation to the exercise of the

discretionary power.

11.24 Practice and procedure in relation to applications, oppositions

and other matters

(1) This regulation applies in relation to:

(a) applications, oppositions and matters that the Registrar is

authorised, under the Act or these Regulations, to hear and

decide; and

(b) matters being decided on the motion of the Registrar.

(2) Subject to these Regulations, the practice and procedure to be

followed for the purposes of enabling the application or matter to

be decided is to be determined by the Registrar.

(3) A person to be heard at a hearing may apply to the Registrar in

respect of the practice and procedure relating to the hearing to be

determined by the Registrar.

11.25 Evidence

(1) If evidence is given in writing to the Registrar for the purposes of

the Act or these Regulations, the evidence must be in the form of a

declaration.

(2) The Registrar may:

(a) require a person who has made a declaration to appear before

him or her to give evidence orally on oath or affirmation in

substitution for, or addition to, the evidence contained in the

declaration; and

(b) allow the person to be cross-examined on the declaration.

11.26 Declarations

(1) A declaration required or permitted by the Act or these Regulations

to be given to the Registrar must be in the approved form.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Other Part 11.6

Designs Regulations 2004 49

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Note: Declaration forms in the approved form are available on the IP

Australia website at www.ipaustralia.gov.au.

(2) A declaration in the form of a statutory declaration, required or

permitted to be given to the Registrar, may be given to the

Registrar in an electronic form by a means of electronic

communication approved by the Registrar.

Note: A declaration that is not in the form of statutory declaration may also

be given in an electronic form by means of an electronic

communication: see section 11 of the Electronic Transactions Act

1999.

11.27 Non compliance in relation to documents other than design

applications

(1) This regulation applies in relation to a document other than a

design application.

(2) A document filed at the Designs Office must substantially comply

with Schedule 2.

(3) If a document does not substantially comply with Schedule 2, or is

not in accordance with any applicable approved form, the Registrar

must, depending on the nature and deficiency of the document:

(a) return the document to the person from whom the document

was received, with a statement indicating in what way the

document does not comply, or is not in accordance; or

(b) direct that person to do the things specified in the direction to

ensure that the document will comply, or will be in

accordance.

(4) If the Registrar returns a document under paragraph (3)(a), the

document is taken not to have been filed.

(5) If the Registrar gives a direction under paragraph (3)(b), the

document is taken to have been filed unless the person to whom the

direction was given does not comply with the direction within 2

months from the day when it was given.

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.6 Other

50 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

11.28 Directions for actions not otherwise prescribed

If:

(a) the Registrar reasonably believes that it is necessary, for the

proper prosecution or completion of proceedings before the

Registrar, for a person to perform an act, file a document or

produce evidence; and

(b) that action is not specified elsewhere in the Act or these

Regulations;

the Registrar may give notice to the person directing the person to

perform the act, file the document or produce the evidence.

11.29 Acting for persons unable to act

(1) If a person is incapable of doing anything required or permitted by

the Act or these Regulations to be done because of infancy, mental

disability, physical disability or disease, a court may, on the

application by a person acting for the incapable person or by any

other person interested in the doing of the thing:

(a) do that thing in the name of, and on behalf of, the incapable

person; or

(b) appoint a person to do the thing in the name of, and on behalf

of, the incapable person.

(2) A thing done in the name of, and on behalf of, an incapable person

is taken to have been done by that person as if he or she had not

been incapable when the thing was done.

(3) In this regulation:

mental disability means a disturbance or defect, to a severely

disabling degree, of perceptual interpretation, comprehension,

reasoning, learning, judgment, memory, motivation or emotion.

11.30 Requirements that cannot be complied with for reasonable

causes

If:

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Other Part 11.6

Designs Regulations 2004 51

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(a) a person is required, under these Regulations, to sign a

document, make a declaration, file or give to the Registrar a

document or evidence, or to do any other act or thing; and

(b) the Registrar is satisfied that the person cannot reasonably

comply with the requirement;

the Registrar may, subject to any condition that he or she

reasonably directs, dispense with the requirement.

11.31 Review of decisions

(1) In this regulation:

decision has the same meaning as in the Administrative Appeals

Tribunal Act 1975.

Tribunal means the Administrative Appeals Tribunal.

(2) Application may be made to the Tribunal for review of a decision

of the Registrar under subparagraph 9.05(5)(c)(ii).

(3) If the Registrar gives a person affected by a decision mentioned in

subregulation (2) written notice of the making of the decision, the

notice must include a statement to the effect that, subject to the

Administrative Appeals Tribunal Act 1975, application may be

made to the Tribunal for review of that decision by or on behalf of

the person whose interests are affected.

(4) Failure to comply with subregulation (3) in relation to a decision

does not affect the validity of the decision.

11.32 Period for doing certain acts—office not open for business

For subsection 136A(1) of the Act, the circumstance is that the act

is done at:

(a) the Designs Office; or

(b) a sub-office of the Designs Office;

that was not open for business.

Note: Subsection 136A(1) provides as follows:

Federal Register of Legislative Instruments F2015C00507

Chapter 11 Miscellaneous

Part 11.6 Other

52 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

‘(1) If the last day of a period provided by this Act (except this section) or

the regulations for doing an act is a day when the Designs Office, or a

sub-office of the Designs Office, is not open for business, the act may

be done in prescribed circumstances on the next day when the office

or sub-office is open for business.’.

11.33 Days when office not open for business

(1) For paragraph 136A(2)(a) of the Act, the days on which the

Designs Office, or a sub-office of the Designs Office, is not open

for business are:

(a) Saturday; and

(b) Sunday; and

(d) Anzac Day.

(2) For paragraph 136A(2)(b) of the Act, the table sets out prescribed

persons.

Item Person

1 The Director General of IP Australia

2 The Deputy Director General of IP Australia

3 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Director General of IP Australia

4 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of the Deputy Director General of IP Australia

5 Another person who:

(a) is an SES employee of IP Australia; and

(b) acts with the agreement of another SES employee of IP Australia

Note: SES employee is explained in section 34 of the Public Service Act

1999. That meaning is applied generally to Commonwealth legislation

by section 2B of the Acts Interpretation Act 1901.

Federal Register of Legislative Instruments F2015C00507

Miscellaneous Chapter 11

Other Part 11.6

Designs Regulations 2004 53

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(3) For paragraph 136A(2)(b) of the Act, the prescribed way of

publishing a declaration is in the Official Journal of Designs.

11.34 Period for doing certain acts—acts to which section 136A does

not apply

For subsection 136A(7) of the Act, an act done in relation to

proceedings in a court or a tribunal is prescribed.

Federal Register of Legislative Instruments F2015C00507

Chapter 12 Repeal, transitional and saving provisions

Part 1 General

54 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Chapter 12—Repeal, transitional and saving

provisions

Part 1—General

12.01 Conversion of transitional applications

(1) For paragraph 159(2)(a) of the Act, the prescribed period:

(a) begins on the commencement of this subregulation; and

(b) ends immediately before:

(i) the design is registered; or

(ii) the application lapses or is withdrawn or refused.

(2) For paragraph 159(2)(c) of the Act, the request must be made in

the approved form.

12.02 Former Designs Regulations—transitional

Despite the repeal of the Designs Regulations 1982, those

Regulations continue to have effect to the extent necessary to give

effect to Part 2 of Chapter 12 of the Act.

12.03 Designs excluded from transitional applications that are not

converted applications

(1) This regulation applies if:

(a) 1 or more designs are disclosed in a transitional application;

and

(b) the transitional application is amended under section 22B of

the old Act to exclude 1 or more of those designs; and

(d) before the registration, or the refusal of the registration, of

the design or designs in the transitional application, the

applicant files a design application under section 21 of the

Federal Register of Legislative Instruments F2015C00507

Repeal, transitional and saving provisions Chapter 12

General Part 1

Designs Regulations 2004 55

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Act in respect of 1 or more of the designs excluded from the

transitional application (the excluded transitional designs).

Note: For a transitional application that is a converted application, see

section 160 of the Act.

(2) A design application in respect of excluded transitional designs

must include a request for registration or publication of all the

designs disclosed in the application.

(3) In applying these Regulations (other than regulations 1.04 and

3.02) in relation to an excluded transitional design:

(a) a reference to an excluded design is taken to be a reference to

the excluded transitional design; and

(b) a reference to an initial application is taken to be a reference

to the transitional application; and

excluded design in the initial application’ is taken to be a

reference to ‘the application number of the transitional

application in which the excluded transitional design was

disclosed’; and

(d) a reference to ‘a design application mentioned in

subsection 23(2) of the Act’ is taken to be a reference to ‘a

design application mentioned in paragraph 12.03(1)(d)’.

(4) Subregulation (5) applies in relation to a design application

mentioned in paragraph (1)(d) that was filed before this regulation

commences.

(5) If a request for registration or publication of each design disclosed

in the design application is filed within the period prescribed under

these Regulations, as in force immediately before this regulation

commences:

(a) the request is taken to have been filed on the day when the

design application was filed; and

(b) the design application is taken to have complied with

subregulation (2).

(6) In this regulation:

Federal Register of Legislative Instruments F2015C00507

Chapter 12 Repeal, transitional and saving provisions

Part 1 General

56 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

transitional application means an application for registration of a

design that was made under the old Act before 17 June 2004.

12.04 Protection and compensation provisions—transitional

(1) Subsections 18(3) and 18(4) of the old Act, and regulations 29AA,

29A and 29B of, and Schedule 1 to, the old Regulations, are taken

to have effect, in relation to an application for a licence under

subregulation 29AA(2) of the old Regulations, as if those

provisions had not been repealed.

(2) Subsection 27B(7) of the old Act, and regulations 29, 29A and 29B

of, and Schedule 1 to, the old Regulations, are taken to have effect,

in relation to an application for a licence under subregulation 29(2)

of the old Regulations, as if those provisions had not been

repealed.

Federal Register of Legislative Instruments F2015C00507

Repeal, transitional and saving provisions Chapter 12

Amendments made by particular instruments Part 2

Designs Regulations 2004 57

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 2—Amendments made by particular

instruments

12.05 Amendments made by the Intellectual Property Legislation

Amendment (Raising the Bar) Regulation 2013 (No. 1)

The amendments of these Regulations made by item 3 of

Schedule 6 to the Intellectual Property Legislation Amendment

(Raising the Bar) Regulation 2013 (No. 1), other than the insertion

of new subregulation 11.22(1), apply in relation to a hearing for

which the Registrar issues a hearing notice, or an invitation to be

heard, on or after 15 April 2013.

Federal Register of Legislative Instruments F2015C00507

Schedule 2 Formal requirements

58 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Schedule 2—Formal requirements (regulations 4.04, 4.05, 4.15 and 11.27)

1 Fitness for reproduction

(1) Each sheet included in a document must:

(a) be presented in a way that allows any number of copies of the

sheet to be reproduced directly by photocopying, digital

scanning, microfilming and photography; and

(b) not be folded, creased or cracked; and

vertical format; and

(d) be durable, flexible, smooth, strong, white and have a matt

finish; and

(e) be of international sheet size A4; and

(f) be printed on 1 side only.

(2) A document must be free from any erasures, alterations,

overwriting and interlineations that, in the reasonable opinion of

the Registrar, would:

(a) compromise the authenticity of the document; or

(b) reduce the likelihood of clear reproduction of the document.

2 Separate sheets

(1) The sheets included in an application must be connected so that

they may:

(a) be readily turned to be read; and

(b) be readily separated for the purposes of reproduction and be

readily rejoined.

(2) Representations must be on a separate sheet or separate sheets to

any other documents filed in relation to the application.

3 Margins

(1) Each sheet must have a margin of at least 2.5 cm on each side.

Federal Register of Legislative Instruments F2015C00507

Formal requirements Schedule 2

Designs Regulations 2004 59

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(2) A sheet of representations must not contain a frame surrounding

the representations.

4 Textual matter

(1) All textual matter must:

(a) be typewritten; or

(b) if it cannot be typewritten—be in large and legible

handwriting.

(2) The lines of any typewritten text must be 1½ spaced or double

spaced

(3) The text must:

(a) be presented in letters the capitals of which are at least 0.21

cm high; and

(b) be presented in a dark colour; and

5 Additional requirements for representations

(1) A single representation must not exceed a single sheet.

(2) A single sheet may include more than 1 representation.

(3) Subject to subclause (4), if there are 2 or more representations on a

sheet, each representation must be presented in a vertical format

and be separated from each other.

(4) If the representations on a sheet cannot be presented in a vertical

format, each representation must be presented in a horizontal

format with the top of the representation towards the left of the

sheet (when viewed in a vertical format).

(5) Each sheet of representations must be numbered using a pair of

numbers (written in Arabic numerals) separated by ‘/’, the 1st

number being the sheet number (beginning with ‘1’) and the 2nd

number being the total number of sheets of representations (eg

1/10, 2/10 and 3/10).

(6) If:

(a) the application is for 1 design; and

Federal Register of Legislative Instruments F2015C00507

Schedule 2 Formal requirements

60 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

(b) the design is a common design in relation to more than 1

product;

the representations must show the design in relation to each

product identified in the application

(7) If the application is for more than 1 design:

(a) each design must be separately and clearly indicated; and

(b) a single sheet cannot be used to show more than 1 design.

(8) Originals and copies of drawings must be executed in durable,

black, dense, dark, uniformly thick and well-defined lines and

strokes without colouring.

(9) A line in a drawing must generally be drawn with the aid of

drafting instruments.

(10) A cross-section must be indicated by oblique hatching that does not

impede the clear reading of reference letters, numbers or signs and

leading lines.

(11) The scale of a representation and the distinctness of its execution

must enable all details to be distinguished without difficulty on a

photographic reproduction of the representation with a 2/3 linear

reduction in size.

(12) Each representation must be shown in proper proportion to each

other representation, except when the use of a different proportion

is necessary for clarity of the representation.

(13) A letter, number or reference line shown on a representation must

be presented simply and be clear.

(14) Brackets, braces, circles or inverted commas must not be used in

association with letters or numbers.

(15) A representation must not include descriptive text, other than any

word or words necessary for the understanding of the

representation.

(16) The height of a letter or a number in a representation must be at

least 0.32 cm.

Federal Register of Legislative Instruments F2015C00507

Formal requirements Schedule 2

Designs Regulations 2004 61

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

6 Photographs and digital images

(1) Photographs must be original and clear.

(2) Photographs of specimens must be taken against a neutral and

contrasting background.

(3) Photographs must be mounted on paper as follows:

(a) the paper and mounting adhesive must be of a nature that will

not cause deterioration of the photograph;

(b) the paper and mounting must allow any number of copies of

the photograph to be reproduced directly by photocopying,

digital scanning, microfilming and photography;

cracked;

(d) subject to subclause 5(4), the photograph must be mounted in

a vertical format;

(e) the photograph must be mounted:

(i) on paper that is durable, flexible, smooth, strong, white

and have a matt finish; and

(ii) on paper that is of international sheet size A4; and

(iii) on 1 side of the paper only.

(4) Representations printed from a digital images must be clear and of

high definition.

7 Electronic documents

A document that is filed in electronic form must be in the approved

form.

8 Scandalous matter

An application must not contain any scandalous matter, or matter

that might reasonably be taken to be scandalous.

Federal Register of Legislative Instruments F2015C00507

Schedule 3 Costs

Part 1 Costs

62 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Schedule 3—Costs (regulation 10.02)

Part 1—Costs

Item Matter Amount

1 Preparing notice of opposition $200

2 Receiving and perusing notice of opposition $130

3 Preparation of case for hearing $525

4 Attendance at hearing by:

(a) a registered patent attorney without counsel; or

(b) a registered trade marks attorney without counsel;

$260 an hour, but not

more than $1 170 a

day

5 Attendance at hearing by:

(a) a registered patent attorney instructing counsel; or

(b) a registered trade marks attorney instructing

counsel; or

$200 an hour, but not

more than $900 a day

6 Counsel fees for attendance at hearing $300 an hour, but not

more than $1 350 a

day

Federal Register of Legislative Instruments F2015C00507

Costs Schedule 3

Expenses and allowances Part 2

Designs Regulations 2004 63

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Part 2—Expenses and allowances

Division 1—Expenses

1 A person who has paid a fee prescribed in these Regulations in

relation to proceedings before the Registrar may be paid the

amount of the fee.

Note: If the person wishes to be paid, the person must apply for an award of

costs in respect of the proceedings: see regulation 10.02.

2 A person attending proceedings before the Registrar must be paid:

(a) a reasonable amount for allowances for transport between the

person’s usual place of residence and the place where he or

she attends the proceedings; and

(b) if the person is required to be absent overnight from his or

her usual place of residence—a reasonable amount for

allowances up to a daily maximum of $700 for meals and

accommodation.

Division 2—Allowances

3 A person who, because of his or her professional, scientific or

other special skill or knowledge, is summoned to appear as a

witness before the Registrar must be paid:

(a) if the person is remunerated in his or her occupation by

wages, salary or fees—an amount equal to the amount of

wages, salary or fees not paid to the person because of his or

her attendance as a witness; or

(b) in any other case—an amount of not less than $140, or more

than $700, for each day when he or she so attends.

4 A person summoned to appear as a witness, other than a witness

referred to in clause 3, before the Registrar must be paid:

(a) if the person is remunerated in his or her occupation by

wages, salary or fees—an amount equal to the amount of

wages, salary or fees not paid to the person because of his or

her attendance as a witness; or

(b) in any other case—an amount of not less than $80, or more

than $130, for each day when he or she so attends.

Federal Register of Legislative Instruments F2015C00507

Schedule 4 Fees

64 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Schedule 4—Fees (regulations 11.01 and 11.01A)

Item Matter Fee

1 Filing a design application

(a) by approved means;

$250 for each design identified,

by the applicant, as being a

separate design disclosed in the

application

(b) by another means $350 for each design identified,

by the applicant, as being a

separate design disclosed in the

application

2 Filing a request for registration covering a

further design

(a) by approved means; $250 for each further design

covered by the request

(b) by another means $350 for each further design

covered by the request

3 Filing a request, by the registered owner of

a design, for examination of the design

$420

4 Filing a request, by a person other than the

registered owner of a design, for

examination of a design

(a) payable by the person filing

the request—$210; and

(b) payable by the registered

owner—$210

5 Filing an application for renewal of the

registration of a design

(a) by approved means $320

(b) by another means $370

and, in addition, if the fee is paid after the

expiry of 5 years from the day when the

term of registration of the design starts

$100 for each month or part of a

month after the expiry of the 5

years and before the fee is

paid (maximum $600)

6 Lodging a request for an extension of the

period of registration:

(a) under subsection 27A(2) of the old Act

within the meaning of section 161 of

the Act (the first extension);

(a) $55;

Federal Register of Legislative Instruments F2015C00507

Fees Schedule 4

Designs Regulations 2004 65

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Item Matter Fee

(b) under subsection 27A(12) of the old

Act (the second extension);

(b) $90;

Act (the third extension)

7 Filing an application for an extension of

time on the ground specified in

paragraph 137(2)(a) of the Act

$100 for each month or part of a

month for which the extension is

sought

8 Filing an application for an extension of

time on the ground specified in

paragraph 137(2)(b) of the Act

$100

9 Filing a notice of opposition $550

10 Filing any 1 of the following: $500

(a) a request for a determination under

section 29 of the Act;

(b) a request for a direction under

section 30 of the Act;

Act for revocation of the registration of

a design;

(d) a request under paragraph 11.22(3)(c)

for the exercise of the Registrar’s

discretionary powers;

(e) a request for the exercise of the

Registrar’s discretionary powers not

mentioned in the above paragraphs

11 Filing a request for a hearing $600

12 Appearing at a hearing (a) for the first day—$600 less

any amount paid under

item 10 or 11 in relation to the

hearing; and

(b) if the hearing runs for more

than a day—$600 for each

day or part of a day after the

first day

Federal Register of Legislative Instruments F2015C00507

Schedule 4 Fees

66 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Item Matter Fee

13 Filing a request for the supply, by the

Registrar, of:

(a) a duplicate certificate of registration; or

(b) a duplicate certificate of examination

$250

14 Filing a request for the supply, by the

Registrar, of a copy of an extract from the

(a) $50 for the document; or

(b) if a search is required for the

document—$100 for the

document

15 Filing a request for the supply, by the

Registrar, of a copy of a document other

than an extract from the Register

(a) $50 for the document; or

(b) if a search is required for the

document—$100 for the

document

16 Filing a request for certification of a

document

$50

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 1—About the endnotes

Designs Regulations 2004 67

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Endnotes

Endnote 1—About the endnotes

The endnotes provide information about this compilation and the compiled law.

The following endnotes are included in every compilation:

Endnote 1—About the endnotes

Endnote 2—Abbreviation key

Endnote 3—Legislation history

Endnote 4—Amendment history

Endnotes about misdescribed amendments and other matters are included in a

compilation only as necessary.

Abbreviation key—Endnote 2

The abbreviation key sets out abbreviations that may be used in the endnotes.

Legislation history and amendment history—Endnotes 3 and 4

Amending laws are annotated in the legislation history and amendment history.

The legislation history in endnote 3 provides information about each law that

has amended (or will amend) the compiled law. The information includes

commencement details for amending laws and details of any application, saving

or transitional provisions that are not included in this compilation.

The amendment history in endnote 4 provides information about amendments at

the provision (generally section or equivalent) level. It also includes information

about any provision of the compiled law that has been repealed in accordance

with a provision of the law.

Misdescribed amendments

A misdescribed amendment is an amendment that does not accurately describe

the amendment to be made. If, despite the misdescription, the amendment can

be given effect as intended, the amendment is incorporated into the compiled

law and the abbreviation “(md)” added to the details of the amendment included

in the amendment history.

If a misdescribed amendment cannot be given effect as intended, the

amendment is set out in the endnotes.

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 2—Abbreviation key

68 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Endnote 2—Abbreviation key

A = Act orig = original

ad = added or inserted par = paragraph(s)/subparagraph(s)

am = amended /sub-subparagraph(s)

amdt = amendment pres = present

c = clause(s) prev = previous

C[x] = Compilation No. x (prev…) = previously

Ch = Chapter(s) Pt = Part(s)

def = definition(s) r = regulation(s)/rule(s)

Dict = Dictionary Reg = Regulation/Regulations

disallowed = disallowed by Parliament reloc = relocated

Div = Division(s) renum = renumbered

exp = expires/expired or ceases/ceased to have rep = repealed

effect rs = repealed and substituted

F = Federal Register of Legislative Instruments s = section(s)/subsection(s)

gaz = gazette Sch = Schedule(s)

LI = Legislative Instrument Sdiv = Subdivision(s)

LIA = Legislative Instruments Act 2003 SLI = Select Legislative Instrument

(md) = misdescribed amendment SR = Statutory Rules

mod = modified/modification Sub-Ch = Sub-Chapter(s)

No. = Number(s) SubPt = Subpart(s)

o = order(s) underlining = whole or part not

Ord = Ordinance commenced or to be commenced

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 3—Legislation history

Designs Regulations 2004 69

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Endnote 3—Legislation history

Number and year Gazettal or FRLI

registration

Commencement Application, saving

and transitional

provisions

2004 No. 117 11 June 2004 17 June 2004

2004 No. 325 25 Nov 2004 25 Nov 2004 —

2005 No. 50 29 Mar 2005 (see

F2005L00761)

3 Apr 2005 —

2006 No. 355 15 Dec 2006 (see

F2006L03971)

1 Mar 2007 —

2007 No. 40 23 Mar 2007 (see

F2007L00650)

rr. 1–10 and

Schedules 1–3, 5 and 6:

27 Mar 2007

Schedules 4 and 8: 1

Apr 2007 (see r. 2 (b))

Schedule 7: 27 Mar

2007 (see r. 2 (c))

—

2008 No. 279 19 Dec 2008 (see

F2008L04588)

1 Jan 2009 —

2009 No. 150 26 June 2009 (see

F2009L02472)

1 July 2009 —

2009 No. 332 27 Nov 2009 (see

F2009L04297)

12 Dec 2009 —

2011 No. 62 16 May 2011 (see

F2011L00773)

1 July 2011 —

2011 No. 217 29 Nov 2011 (see

F2011L02480)

Schedule 1 (Part 1): 27

Dec 2011

—

2012 No. 66 14 May 2012 (see

F2011L01031)

Schedule 3 (Parts 1–3):

1 July 2012

Schedule 3 (Part 4): 1

Oct 2012

s. 5

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 3—Legislation history

70 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Number and year Gazettal or FRLI

registration

Commencement Application, saving

and transitional

provisions

31, 2013 18 Mar 2013

(F2013L00479)

Sch 3 (items 31, 32),

Sch 6 (items 1–4) and

Sch 7 (items 5, 6): 15

Apr 2013 (s 2)

—

88, 2015 19 June 2015

(F2015L00852)

Sch 3 (items 1, 2) and

Sch 5 (items 1, 2):

20 June 2015 (s 2(1)

items 4, 6)

—

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 4—Amendment history

Designs Regulations 2004 71

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Endnote 4—Amendment history

Provision affected How affected

Chapter 1

r. 1.04.............................................am. 2004 No. 325; 2012 No. 66

r. 1.05.............................................rs. No. 31, 2013

r 1.06..............................................ad No 88, 2015

Chapter 3

Part 3.2

Note to r. 3.04(1) ...........................ad. 2004 No. 325

Note to r. 3.08 ................................ad. 2004 No. 325

Part 3.4

r. 3.14.............................................am. 2004 No. 325

Note to r. 3.14(1) ...........................ad. 2004 No. 325

Chapter 4

Part 4.2

r. 4.01.............................................am. 2004 No. 325

Part 4.3

Note to r. 4.04(1) ...........................ad. 2004 No. 325

Note to r. 4.05(1) ...........................ad. 2004 No. 325

Note to r. 4.08(1) ...........................rep. 2004 No. 325

Notes 1 and 2 to r. 4.08(1) .............ad. 2004 No. 325

Note to r. 4.08(2) ...........................rep. 2004 No. 325

Notes 1 and 2 to r. 4.08(2) .............ad. 2004 No. 325

Chapter 5

r. 5.04.............................................am. No. 31, 2013

r 5.08..............................................am No 88, 2015

Chapter 9

r. 9.05.............................................am. No. 31, 2013

Chapter 11

Part 11.2

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 4—Amendment history

72 Designs Regulations 2004

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Provision affected How affected

r. 11.01...........................................am. 2012 No. 66

r. 11.01A........................................ad. 2012 No. 66

r. 11.09...........................................am. 2004 No. 325

Part 11.5

r. 11.13...........................................am. No. 31, 2013; No 88, 2015

Part 11.6

r. 11.17...........................................rep. 2009 No. 332

r. 11.19...........................................am. 2011 No. 62

r. 11.22...........................................rs. No. 31, 2013

r. 11.23...........................................rs. No. 31, 2013

r. 11.26...........................................am. 2009 No. 150

rs. 2012 No. 66

r. 11.32...........................................ad. 2007 No. 40

r. 11.33...........................................ad. 2007 No. 40

am. 2011 No. 62

Note to r. 11.33(2)..........................am. 2011 No. 217

r. 11.34...........................................ad. 2007 No. 40

Chapter 12

Part 1

Heading to Part 1 of .......................

Chapt. 12

ad. No. 31, 2013

r. 12.03...........................................ad. 2004 No. 325

r. 12.04...........................................ad. 2004 No. 325

Part 2

Part 2 of Chapt. 12 .........................ad. No. 31, 2013

r. 12.05...........................................ad. No. 31, 2013

Schedule 1......................................am. 2005 No. 50; 2007 No. 40; 2008 No. 279; 2012 No. 66

rep. No. 31, 2013

Schedule 3

Part 1

Part 1..............................................rs. 2006 No. 355

Federal Register of Legislative Instruments F2015C00507

Endnotes

Endnote 4—Amendment history

Designs Regulations 2004 73

Compilation No. 13 Compilation date: 20/6/15 Registered: 22/6/15

Provision affected How affected

Part 2

Part 2..............................................am. 2006 No. 355

Schedule 4

Schedule 4......................................am. 2004 No. 325; 2006 No. 355

rs. 2012 No. 66

Federal Register of Legislative Instruments F2015C00507

Designs Regulations 2004 (consolidated as of June 20, 2015), Australia

Available Materials