Hysential Pty Ltd
[2025] ADO 2
•19 June 2025
DESIGNS ACT 2003
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Registered design number 202414139 - Fluid Hygiene Dispenser - in the name of Hysential Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Owner: Steven Ugrinovski and Neeraj Aumer |
Decision: | 2025 ADO 2 Designs Act 2003 (Cth) – request for amendment – considered under reg 9.05 of the Designs Regulations 2004 (Cth) – no clerical error or obvious mistake – amendment under reg 9.05 not allowable – request for amendment refused. |
Background
This matter concerns a request made under the Designs Regulations 2004 (Cth)[1] to amend a registered design (‘Design’), the details of which I extract below:
Design number: 202414139
Owner: Hysential Pty Ltd (‘Owner’)
Product: Fluid Hygiene Dispenser
Filed: 20 June 2024
Certificate of examination issued: 22 October 2024
Representations: see Schedule 1 (‘Representations’)
[1] Unless I have otherwise specified, throughout these written reasons a reference to a section of an enactment is a reference to a section in the Designs Act 2003 (Cth) and a reference to a regulation of an enactment is a reference to a regulation in the Designs Regulations 2004 (Cth).
The Design was registered on 28 July 2024. The Owner requested examination of the Design. On 17 September 2024, the Owner requested that the Design be amended to substitute the representations at Schedule 1 to these written reasons. On 18 September 2024, a delegate of the Registrar of Designs (‘Registrar’) replied in writing in the following terms, giving the Owner four weeks to respond:
Problem with Supporting Documentation
The request was to amend the design right to correct an error. However, no supporting documentation has been provided to clearly show that a clerical error or obvious mistake occurred. This means there is not enough information for the amendment to be made.
What you can do
Please submit the relevant supporting document, making sure it clearly demonstrates a clerical error or obvious mistake.
On 22 October 2024, the Design was examined, and a certificate of examination was issued to the Owner. On 22 October 2024, the Designs Office contacted the Owner by letter noting that as the deadline for responding had passed without any response, the request for amendment had been refused.
On 26 October 2024, the Owner requested to be heard on the refusal to amend the Representations. The hearing request was accompanied by a letter outlining the proposed substitutions to be made to the Representations (‘Letter-1’).
To offer further clarification regarding the requirements for amendments under the Act, a delegate of the Registrar contacted the Owner on 12 December 2024 by letter and thereafter by telephone. Thereafter, the Designs Office set the matter down for a hearing.
On 14 February 2025, I directed that the Owner file any evidence and/or written submissions by 5 March 2025. The Owner did not file any documents by this date.
On 12 March 2025, as a delegate of the Registrar, I heard this matter by video conference. The Owner was represented by Steven Ugrinovski and Neeraj Aumer, employees of the Owner. At the hearing I noted that they had not submitted any evidence to the Designs Office, as nothing to date had been provided in the form of a declaration.
After the hearing, I considered it reasonable and appropriate in the circumstances to afford the Owner an additional opportunity to provide any evidence in a declaratory format and if they desired any related written submissions.
On the day of the hearing, I requested that the Owner provide any evidence and/or submissions by 4 April 2025. On 4 April 2025, the Owner filed a declaration of Steven Ugrinovski, CEO of the Owner, of the same date (‘Ugrinovski’) and a letter from Steven Ugrinovski (‘Letter-2’).
On 29 April 2025, I notified the Owner that I intended to decide the matter unless the Owner requested an additional oral hearing. The Designs Office did not receive any response from the Owner.
I am to decide this matter as a delegate of the Registrar with reference to all materials on the file as well as the submissions made orally at the hearing.
Evidence
In Letter-1, the Owner submitted the following:
I am writing to formally request an amendment to the fluid dispenser design submitted under 202414139 initially filed on 20 Jun 2024. Due to an oversight, the initial submission does not accurately represent the intended design features.
The revised design submission includes the following important modifications, as illustrated in the attached images:
…
These changes more accurately represent the intended design features and improve the overall performance and appearance of the dispenser. I kindly request that the newly attached design file be accepted as a replacement for the previously submitted file.[2]
[2] I need not extract the images of the proposed representations to which the Owner seeks to amend the Representations of the Design.
The hearing request filed by the Owner relevantly states:
I am writing to formally request a hearing in response to the recent refusal of the amendment for the fluid dispenser design under 202414139 initially filed on 20 Jun[e] 2024, was refused, and I would like the opportunity to discuss the design modifications in personal hearing.
As previously submitted, the amended design reflects adjustments to the lip design in the front view and a modification in the number of bottom projection rows, which I believe are essential to the functionality and aesthetics of the dispenser. I am confident that a hearing will allow for a thorough explanation of these changes and their significance to the overall design.
Letter-2 relevantly states:
We respectfully request the allowance of an amendment under Regulation 9.05, to correct the registered design by substituting the correct design file STV001-02, which was the version intended for registration. The current record does not reflect our actual design, and the error was entirely clerical and unintentional.
The differences between STV001-01 (incorrect) and STV001-02 (intended) are immediately apparent in the attached comparative drawings. In STV001-02, the lip structure is shorter and more narrow, and the arrangement and form of the dots on the front face have been modified. These changes were finalized and approved before filing and were not the result of any post-filing design revision or development. The file STV001-01 was an earlier working draft mistakenly submitted due to filename similarity and folder misidentification.
We believe this amendment clearly falls within the scope of Regulation 9.05, as it addresses a filing error rather than an attempt to broaden or evolve the design. It reflects what was intended at the time of the original submission and is therefore appropriate for correction under this regulation.[3]
[3] Emphasis in original.
Ugrinovski simply repeats what was stated in Letter-2.
Consideration
The Owner has made a request under reg 9.05 to amend the details of the Design as appearing on the Register. Regulation 9.05 has as its focus amendment of entries on the Register, which would include the representations of a registered design.
Regulation 9.05
Section 149(1) provides that:
The Governor‑General may make regulations prescribing matters:
(a) required or permitted to be prescribed; and
(b) necessary or convenient to be prescribed for carrying out or giving effect to this Act; and
(c) necessary or convenient for the conduct of any business relating to the Designs Office.
Section 149(2)(e) further provides that:
‘Without limiting subsection (1), that subsection includes the power to make regulations:
making provision for and in relation to the amendment of an entry in the Register to correct a clerical error or an obvious mistake, or for any other purpose…
Regulation 9.05 provides:
9.05 Correction of Register
(1) The Registrar may, of his or her own motion, amend an entry in the Register to correct a clerical error or an obvious mistake.
(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 notify 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.
Clerical error
In R v Commissioner of Patents, Ex parte Martin (‘Martin’), the High Court of Australia considered the meaning of the words ‘clerical error’ in the context of a proposed amendment to the Register of Patents, where the patentee had erroneously described themself as the inventor.[4]
[4] [1953] HCA 67; (1953) 89 CLR 381 (Williams ACJ, Webb, Fullagar, Kitto and Taylor JJ).
In Martin, Fullagar J observed the following of the words ‘clerical error’:
That expression is, no doubt, one of a somewhat elastic character ... In the New Oxford Dictionary one meaning attributed to the word “clerical” is “Of or pertaining to a clerk or penman: esp. in ‘clerical error’, an error made in writing anything out”. According to Webster, one meaning of the word “clerical” is “Of or relating to a clerk or copyist”, and an example given is “clerical error, an error made in copying or writing”. Probably no one would deny that a clerical error may produce a significant, and even profound, effect as for example, in a case in which a writer or typist inadvertently omits the small word “not”. But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing.[5]
[5] Ibid 406.
In Martin, Williams ACJ added that:
A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different.[6]
[6] Ibid 395.
In summary, a clerical error comes about when a person intends to write one thing and mechanically instead writes something else.[7] In Distillers Co Ltd’s Application[8] it was noted that it is necessary to consider the intention of the relevant draftsperson. The designer in the application for the Design is specified as being Mr Ugrinovski. An error might be considered to have arisen if the Representations are not in harmony with his intention, depending on the circumstances and, importantly, what evidence is put before the Registrar.
[7] Martin ibid. See also Johnson & Johnson v Self Care Corporation Pty Ltd [2014] ATMO 111 (Hearing Officer Murray), [16]-[29] and Oddbins Limited v Oddbins Corporate Beverage Suppliers Pty Limited [2001] ATMO 1 (Hearing Officer Thompson), in the context of similar words occurring under the Trade Marks Act 1995 (Cth).
[8] [1953] 70 RPC 221, 223 (Lloyd-Jacob J).
At the hearing, the representatives informed me of the existence of registered design number 202414521 (‘202414521’) which was filed after the application for the Design. They drew my attention to an adverse examination report regarding 202414521 that had been received because of the presence of the Design and submitted that I should apply the grace period in respect of this Design. For clarity, I note that these proceedings concern solely the issue of the request for the amendment to the Design and I confirm that this decision is not concerned with the examination of 202414521.
The Owner submits that there has been a clerical error because it filed the incorrect representations in the application for the Design. Broad assertions are made that what was originally approved and intended to have been filed are the new representations. What appears to be the crucial element here is that an error must have arisen in the ‘mechanical process of writing or transcribing’. Transcription, as a verb, means to make a copy of in writing. I accept that the filing of a document by, for example, unintentionally dragging or selecting a file to be uploaded in filing an application might qualify as a relevant mechanical process which could involve a clerical error.
However, the problem with the evidence of the Owner is that there are broad statements only, which lack details and any supporting evidence. There is no corroborating material or exhibits which support such a claim. The filing of two identical designs hints at an error of some kind. However, that error, if it was such a thing, could equally pertain to 202414521 as it could to the Design. Furthermore, whilst the Owner states that, ‘[d]ue to an oversight, the initial submission does not accurately represent the intended design features’, there is no specific explanation of what the exact oversight was and how it occurred. I have no evidence, for example, of the internal approvals and instructions to which Mr Ugrinovski refers. Nor do I have the full narrative regarding the conception, drafting and filing strategy for the Design and 202414521. Letter-2 refers to file names and folders containing the artwork for each of the designs in the Representations and proposed representations as being similar. However, there is no evidence, such as screen captures of file properties data concerning any relevant folders, when those folders were created and when the artwork was created.
Overall, the statements made in the evidence and before me are general and without specification or corroboration of an originally intended filing and thereafter a filing which has been attended by a clerical error. Whilst there may have been an error of some kind, the evidence does not relevantly establish one. The evidence rises no higher than mere assertions which are general in nature.
Accordingly, I am not satisfied that there has been a clerical error on the evidence before me.
Obvious mistake
Another avenue for amendment under reg 9.05 is where there has been an ‘obvious mistake’. The words ‘obvious mistake’ have a legal meaning which has been the subject of past decisions which I mention throughout my discussion below. That a mistake must be ‘obvious’ provides that the obviousness must attend to both the mistake and its potential correction, such that these things are obvious by looking at the document that is to be corrected.[9] In particular, the mistake must be obvious on the face of the document proposed to be amended. The test is considered from the point of view of ‘the instructed reader’.[10]
[9] General Tire and Rubber Company (Frost’s) Patent [1972] 12 RPC 259, 277-8 (Graham J) (‘General Tire’); Holtite Ltd v Jost (Great Britain) Ltd [1979] RPC 81, 91 (Lord Diplock).
[10] General Tire ibid 277.
An obvious mistake is one such that ‘the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction’[11] and is to be distinguished from a mistake that has been ‘obviously made’. As Graham J observed in General Tire and Rubber Company (Frost’s) Patent, the intention behind such provisions is that in general ‘something which was not originally an infringement should not be made so by amendment except in a very clear case’.[12]
[11] General Tire ibid 278-279.
[12] General Tire ibid 278.
At the hearing the representatives again referred to 202414521 and its identical representations to the Design. They claimed that 202414521 and the Design are identical and that, on its face, there obviously has been some kind of mistake because a person would easily reach the conclusion that a party would not have intended to file for the same design twice. The representatives assert that there is an obvious mistake and the representations should be substituted.
Past decisions involving incorrectly filed subject matter have often not allowed such an amendment as an ‘obvious mistake’.[13] There is nothing on the face of the Register in the Representations that would even suggest to an instructed reader that there has been error, let alone that one that is obvious on the face of the Representations, or how such an error would be corrected. It is, for example, not obvious when and which of the applications for the two designs carried with it the intention to file the Design. The specific nature of the mistake mentioned is also overall not at all clear on the face of the Register. The Design was registered on 28 July 2024. On 17 September 2024, the Owner filed its request for amendment of the Design. Tellingly, it took the Owner several months itself to recognise that it wished to amend the Representations for the Design. On comparison of the differences between the Representations and the proposed substitutes, the proposed changes are arbitrary such that a person viewing the Register could not have anticipated them. Accordingly, the proposed changes are not obvious.
[13] See, for example, Wilson's Patent [1968] RPC 197 (Lloyd-Jacob J) and Union Carbide Corporation (Hostettler's) Application [1969] RPC 530 (Lloyd-Jacob J), which both involved incorrect formulae being filed in patent applications.
After review of the material before me, I am not satisfied that there has been an obvious mistake which would qualify under reg 9.05.
Decision
I am not satisfied that either of the alternative requirements of reg 9.05 are met by the request for amendment.
I refuse the request for amendment of the Design under reg 9.05.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
19 June 2025
Schedule 1
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