Note: Where available, the PDF/Word icon below is provided to view the complete and fully formatted document

 Download WordDownload Word  Download PDFDownload PDF 


Bill home page
Table Of Contents
Previous Fragment    Next Fragment
Designs Bill 2003

Part 3 Registration

Division 1 Formalities check

39   Formalities check—applications in respect of one design only

             (1)  This section applies to a design disclosed in a design application if:

                     (a)  the design is the only design disclosed in the application; and

                     (b)  the applicant has requested that the design be registered.

             (2)  The Registrar must register the design if the Registrar is satisfied that:

                     (a)  the design application satisfies the formalities check specified in the regulations; and

                     (b)  if the design is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product; and

                     (c)  the Registrar is not required to refuse to register the design under subsection 43(1).

40   Formalities check—applications in respect of more than one design

             (1)  This section applies if:

                     (a)  more than one design is disclosed in a design application; and

                     (b)  the applicant has requested registration of one or more of those designs.

             (2)  The Registrar must register a design requested to be registered if the Registrar is satisfied of the following:

                     (a)  that each product to which the design relates belongs to the same Locarno Agreement class;

                     (b)  if the design requested to be registered is purportedly a common design in relation to more than one product—that the design is a common design in relation to each product;

                     (c)  that the design application satisfies the formalities check specified in the regulations;

                     (d)  that the Registrar is not required to refuse to register the design under subsection 43(1).

41   Registrar must give applicants an opportunity to correct deficiencies

                   If the Registrar is not satisfied as mentioned in section 39 or 40 in relation to a design application, the Registrar must give a written notice to the applicant stating:

                     (a)  the matters in relation to which the Registrar is not satisfied; and

                     (b)  that the applicant may request that the Registrar amend the application under section 28; and

                     (c)  that the application will lapse at the end of the period prescribed by the regulations for the purposes of paragraph 33(1)(b) unless, during that period:

                              (i)  the application is amended; or

                             (ii)  the applicant responds in writing to the notice stating why the applicant considers that the application does not need to be amended;

                            and as a result of the amendment or response, the Registrar is satisfied as mentioned in section 39 or 40, as the case requires.

42   What happens after Registrar gives notice under section 41

             (1)  This section applies if the Registrar has given a written notice to an applicant under section 41.

             (2)  If the applicant requests that the Registrar amend the application, the Registrar must consider the request under section 28.

             (3)  If the applicant responds in writing to the notice as mentioned in subparagraph 41(c)(ii), the Registrar must consider the response.

             (4)  If, after considering the request or response, the Registrar is satisfied as mentioned in section 39 or 40 in relation to the design application, the Registrar must register the design or designs disclosed in the application under whichever of those sections applies.

             (5)  If, after considering the request or response, the Registrar is not satisfied as mentioned in section 39 or 40 in relation to the design application, the Registrar may either:

                     (a)  refuse to register the design or designs under section 43; or

                     (b)  give a further notice to the applicant under section 41.

43   Registrar must refuse to register certain designs

             (1)  The Registrar must refuse to register a design if:

                     (a)  the design is a design, or belongs to a class of designs, prescribed by the regulations for the purposes of this paragraph; or

                     (b)  the Registrar must not register the design because of section 18 of the Olympic Insignia Protection Act 1987 ; or

                     (c)  the design is in relation to a product that is:

                              (i)  an integrated circuit within the meaning of the Circuit Layouts Act 1989 ; or

                             (ii)  part of such an integrated circuit; or

                            (iii)  a mask used to make such an integrated circuit; or

                     (d)  the design is subject to an order under section 108.

             (2)  Subject to section 42, the Registrar must refuse to register a design disclosed in a design application in respect of which the Registrar has given a notice under section 41, if the applicant has not:

                     (a)  amended the application; or

                     (b)  responded in writing to the notice stating why the applicant considers that the application does not need to be amended;

in such a way that the Registrar is satisfied as mentioned in section 39 or 40 in relation to the design application.

             (3)  The Registrar must notify the applicant in writing of a refusal under subsection (1) or (2). The notice must set out the reasons for the refusal.

44   Registrar must register certain designs after refusal

                   Despite paragraph 43(1)(d), if:

                     (a)  the Registrar refuses to register a design because the design is subject to an order under section 108; and

                     (b)  the order is later revoked; and

                     (c)  at the date of the revocation of the order, the design would, but for the operation of section 108, have been registered;

the Registrar must register the design within the period prescribed by the regulations.



 

Division 2 Registration procedures

45   Registrar must notify applicant of registration and give public notice

             (1)  This section applies if the Registrar is required to register a design under this Act.

             (2)  The Registrar must enter in the Register the particulars mentioned in section 111, to the extent that they are applicable.

             (3)  The Registrar must issue a certificate of registration to the applicant. The certificate must be in the form prescribed by the regulations.

             (4)  The Registrar must publish a notice stating that the design has been registered. The notice must be in the form prescribed by the regulations.



 

Division 3 Term of registration

46   Term of registration

             (1)  The term of registration of a design is:

                     (a)  5 years from the filing date of the design application in which the design was first disclosed; or

                     (b)  if the registration of the design is renewed under section 47—10 years from the filing date of the design application in which the design was first disclosed.

             (2)  If a design has been excluded from an initial application (see section 23), the design application in which the design was first disclosed is taken, for the purposes of subsection (1), to be the initial application.

47   Renewal of registration

             (1)  The registered owner of a registered design may apply for renewal of the registration of the design.

             (2)  The application must be made within the prescribed period after the filing date of the design application in which the design was first disclosed.

             (3)  The Registrar must renew the registration of the design if the application is in the form prescribed by the regulations.

48   Ceasing of registration

             (1)  The registration of a design ceases if an examination of the design has been requested and:

                     (a)  within the period prescribed for the purposes of paragraph 65(3)(b), the Registrar is not satisfied as mentioned in paragraph 67(1)(a) or 68(1)(a); or

                     (b)  the registered owner of the design has not paid the prescribed fee for the examination by the end of the period prescribed for payment.

             (2)  The registration of a design also ceases at the end of the period mentioned in paragraph 46(1)(a) or (b), as the case requires.

             (3)  If:

                     (a)  a registered design was, at the time of registration, a corresponding design in relation to an artistic work in which copyright subsisted under the Copyright Act 1968 ; and

                     (b)  the design would not have been registered under this Act apart from section 18; and

                     (c)  the copyright in the artistic work under the Copyright Act 1968 expires before the date on which registration of the design would (apart from this subsection) cease to be in force;

the registration of the design ceases at the same time as the expiry of the copyright in the artistic work, and must not be extended after that time.

             (4)  If the registration of a design ceases under subsection (1), any certificate of examination that was in force in respect of the design at the time the registration ceased is taken to be revoked at that time.

49   Surrender of registration

             (1)  The registered owner of a registered design may offer to surrender the registration of the design.

             (2)  If there is more than one registered owner of the design, an offer under subsection (1) must be made by all the registered owners.

             (3)  An offer under subsection (1):

                     (a)  may be made at any time; and

                     (b)  must be in writing and filed; and

                     (c)  must be made in a form prescribed by the regulations.

50   Revocation of registration on surrender

             (1)  This section applies if the Registrar receives an offer to surrender the registration of a design under subsection 49(1).

             (2)  The Registrar must:

                     (a)  notify the persons prescribed by the regulations of the offer; and

                     (b)  give such persons an opportunity to make submissions in the manner, and within the period, prescribed by the regulations.

             (3)  The Registrar may accept the offer, revoke the registration of the design and make an entry in the Register under section 115 after doing the things mentioned in subsection (2).

             (4)  If proceedings in a court have been brought and not completed in relation to the design, the Registrar must not accept the offer to surrender the registration of the design unless:

                     (a)  the court consents; or

                     (b)  all the parties to the proceedings consent.

             (5)  If a compulsory licence is in force in relation to the design, the Registrar must not accept the offer to surrender the registration of the design.

             (6)  An appeal lies to the Federal Court against a decision of the Registrar under this section.



 

Division 4 Revocation on grounds relating to entitled persons

51   Revocation of registration on grounds relating to entitled persons

             (1)  A person may apply to the Registrar for revocation under section 52 of the registration of a design.

             (2)  An application under subsection (1) must:

                     (a)  contain the information prescribed by the regulations; and

                     (b)  be made in the manner prescribed by the regulations.

52   Procedures in relation to application

             (1)  This section applies if a person makes an application under section 51 for revocation of the registration of a design.

             (2)  If the Registrar is satisfied that:

                     (a)  a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or

                     (b)  each original registered owner of the design was an entitled person at the time when the design was first registered, but another person or persons were also entitled persons at that time;

the Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.

             (3)  If the Registrar makes a declaration under subsection (2), the Registrar must:

                     (a)  give the relevant parties a notice stating that the registration of the design is revoked; and

                     (b)  make an entry in the Register under section 115.

             (4)  The Registrar must also publish a notice, in the form prescribed by the regulations, stating that the registration of the design has been revoked and that the design is taken never to have been registered.

             (5)  The Registrar must not revoke the registration of a design under this section unless the Registrar has given each original registered owner a reasonable opportunity to be heard.

             (6)  The Registrar must not revoke the registration of a design under this section while relevant proceedings in relation to that design are pending.

             (7)  An appeal lies to the Federal Court against a decision of the Registrar under this section.

53   Applications by persons declared to be entitled persons in court proceedings

             (1)  This section applies if, in any proceedings in a court in relation to a design, the court is satisfied either:

                     (a)  that a person or persons were entitled persons at the time the design was first registered, and one or more of the original registered owners of the design was not an entitled person at that time; or

                     (b)  that each original registered owner of the design was an entitled person at the time the design was first registered, but that another person or persons were also entitled persons at that time.

             (2)  In addition to any other order it may make in the proceedings, the court may declare that a person whom the court is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.

             (3)  The court may not make an order under subsection (2) unless the registration of the design has been revoked.

54   Applications by entitled persons after revocation following surrender of registration

             (1)  This section applies if:

                     (a)  the Registrar revokes the registration of a design under section 50; and

                     (b)  the Registrar is satisfied on application by one or more persons in accordance with the regulations:

                              (i)  that one or more of the original registered owners was not an entitled person at the time the design was first registered, and another person or persons were entitled persons at that time; or

                             (ii)  that each original registered owner of the design was an entitled person at the time the design was first registered, but another person or persons were entitled persons at that time.

             (2)  The Registrar may make a written declaration specifying that a person whom the Registrar is satisfied was an entitled person at the time the design was first registered is an entitled person under this subsection.

             (3)  The Registrar must not make a declaration under subsection (2) without first giving each original registered owner a reasonable opportunity to be heard.

             (4)  An appeal lies to the Federal Court against a decision of the Registrar to make, or refuse to make, a declaration under subsection (2).

55   Priority date of design if an application filed by a person declared to be an entitled person

                   One or more persons declared to be entitled persons in relation to a design under section 52, 53 or 54 may file an application in respect of the design under section 21, and if they do so, the design has the same priority date as it had in the application in which it was first disclosed.

56   Meaning of original registered owner

                   In this Division:

original registered owner , in relation to a design, means each person entered in the Register as the registered owner at the time the design was first registered.