EXPLANATORY STATEMENT
STATUTORY RULES 1990 NO. 239
Issued by the Authority of the Minister of State for Industry, Technology and Commerce
The Statutory Rules amend the Designs Regulations to make implementing regulations for the purpose of sections 20B and 27B of the Designs Act 1906 (the Act). Details of the amendments are as follows:
Regulation 1 cites the Designs Regulations as the -Principal Regulations’.
Regulation 2 inserts new regulation 7B which specifies that a request for a direction under section 20B of the Act is to be in accordance with Form 5A.
Regulation 3 repeals existing regulations 26, 27, 28 and 29 and substitutes new regulations 26, 27, 28, 29, 29A and 29B.
New regulation 26 specifies that an application for an extension of time must be in accordance with Form 10 and the application must include with it a declaration setting out the grounds on which the application is made.
New regulation 27 provides that where an application for an extension of time is advertised in the Official Journal a person may give notice of opposition to the grant of that application in accordance with Form 10A, not later than one month after the date of the publication of the advertisement.
New regulation 28 provides that if an application for an extension of time is granted, the Registrar of Designs is to publish in the Official Journal a notification of that decision and if the Administrative Appeals Tribunal varies or sets aside that decision, or substitutes another decision, the Registrar is to notify that fact in the Official Journal.
New regulation 29 provides that a person who claims to have used a design, after the application to register the design had lapsed or the registered design had ceased to be in force, but before the application or registration had been restored under subsection 27B(6) of the Act, may apply for the grant of a licence to do any act that would otherwise infringe the monopoly of the design. The regulation also specifies that the application must be made on Form 9 not later than one month after the publication of the grant of the extension of time and that a copy of the application must be given to the person to whom the extension of time was granted and at the direction of the Registrar to any other person.
New regulation 29A provides that a person may give notice of opposition to an application for a licence in accordance with Form
10A, not later than one month after a copy of an application for a licence was received by that person. It also requires a notice of opposition to be given to the person applying for a licence under subregulation 29(2).
New regulation 29B provides for the Registrar, after consideration of all the circumstances of a case, to either grant (with or without conditions) or dismiss an application for a licence.
Regulation 4 omits the definition of “notice of opposition” in existing regulation 30 and substitutes a new definition.
Regulation 5 repeals existing regulation 31 and substitutes new regulation 31 which specifies that Part IV of the Act applies where a notice of opposition has been given in relation to the grant of an extension of time under section 27B of the Act or an application for a licence under subregulation 29(2).
Regulation 6 amends certain forms and inserts new Forms 5A and 10A into Schedule 1 to the Designs Regulations.
Regulation 7 amends Schedule 2 to the Designs Regulations by inserting new fee items 3, 3A, 3B and 5 and amending existing fee item 7.
Overview
The Statutory Rules 1990 No. 239, issued under the authority of the Minister of State for Industry, Technology and Commerce, amend the Designs Regulations to implement sections 20B and 27B of the Designs Act 1906. These amendments aim to provide a more robust regulatory framework for managing design registrations and extensions, as well as applications for licences related to expired designs. The changes include the introduction of new forms and procedures for making applications and notices of opposition, as well as the specification of timelines and conditions for these processes. The objective is to ensure that the administration of design registrations and related matters is conducted in a transparent, efficient, and orderly manner, reflecting the evolving needs of industry and design holders.
Scope and Application
The Statutory Rules 1990 No. 239, issued under the authority of the Minister of State for Industry, Technology and Commerce, amend the Designs Regulations to provide implementing regulations for sections 20B and 27B of the Designs Act 1906. These regulations apply to individuals and entities that engage in activities related to the registration and use of designs, specifically those who apply for or are affected by extensions of time for design applications or applications for licences to use designs after they have lapsed or ceased to be in force. The scope of the Act is limited to the Commonwealth jurisdiction, governing practices and applications within Australia. The regulations introduce new forms and procedures for making requests, applications, and notices of opposition, and specify timelines and conditions for these actions. There are no explicit exclusions or exemptions stated in these regulations, but they do provide a framework for the administration of design-related applications and oppositions within the scope of the Designs Act 1906.
Key Provisions
The Statutory Rules 1990 No. 239, issued under the authority of the Minister of State for Industry, Technology and Commerce, amend the Designs Regulations to implement sections 20B and 27B of the Designs Act 1906 (the Act). Regulation 1 identifies the Designs Regulations as the ‘Principal Regulations’. Regulation 2 introduces a new regulation 7B, stipulating that any request for a direction under section 20B of the Act must comply with Form 5A. This ensures that requests are made in a uniform and prescribed manner.
The amended regulations impose specific obligations on parties interacting with the Designs Act. For instance, Regulation 3 repeals and replaces existing regulations 26, 27, 28 and 29 with new regulations 26, 27, 28, 29, 29A and 29B, thereby updating the processes for applying for and opposing extensions of time and applications for licences. Regulation 26 requires that an application for an extension of time must be accompanied by a declaration detailing the grounds for the request, and it must be made in accordance with Form 10. Similarly, Regulation 27 allows any person to oppose an advertised application for an extension of time by submitting a notice in accordance with Form 10A within one month of the advertisement’s publication. Regulation 29 enables a person to apply for a licence to use a design under specific circumstances, such as after an application or registration had lapsed but before it was restored, and this application must be submitted on Form 9 within one month of the publication of the grant of the extension of time.
Failure to comply with the requirements set forth in the Designs Regulations can result in legal consequences. While the statutory rules do not explicitly detail specific offences, penalties, or consequences for breach, it is implied that non-compliance with these regulations could lead to actions under the Designs Act or related legal frameworks. For instance, not adhering to the stipulated forms or timelines could invalidate an application or opposition notice, thereby affecting the legal standing of the parties involved. In broader legal contexts, failure to comply with prescribed forms or statutory requirements often results in administrative penalties, legal costs, or the dismissal of applications, which can have significant implications for the parties concerned.