In a recent decision, Australia’s Design Office has provided guidance in relation to acceptable circumstances for an obvious mistake.
Case Background
Hysential Pty Ltd is the Applicant for Australian design number 202414139, directed towards a ‘fluid hygiene dispenser’. The design was registered on 28 July 2024 and examination was subsequently requested. The Applicant sought to replace the representations of the design.
The Applicant sought to amend the representations of the design to correct an error that had occurred during filing. However, the Applicant failed to provide supporting evidence of the clerical error or obvious mistake by the response deadline, which led to the Design Office refusing the amendment. The Applicant then requested a Hearing on the matter. Again, it appears that the Applicant did not submit any evidence to support their request before the Hearing. After the Hearing, the Applicant provided a Declaration from their CEO.
The Obvious Mistake in Question
It appears that while filing the design application, the ‘initial submissions [did not] accurately represent the design features’ and the Applicant sought to correct this as being an error. Based on the evidence, it appears that the Applicant contended that a clerical error had occurred when submitting the design application. The Applicant argued that the wrong design files were submitted due to ‘file name similarity and folder misidentification’. The Applicant contended that an incorrect design file name of ‘STV001-01’ (an earlier working draft of the dispenser) was filed instead of the correct design file name of ‘STV001.-02’ and sought to have this corrected. They contended that their request and subsequent amendment was to correct this error and was not an attempt to the broaden the design.
Section 149(2) of the Design Act states that provisions can be made 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’, and that Regulation 9.05 of the Designs Regulations states that the Registrar may ‘amend an entry in the Register to correct a clerical error or an obvious mistake’.
The Hearing Officer’s Findings
The Hearing Officer considered both the clerical error and obvious mistake aspects of this case.
Clerical Error
In relation to clerical error, the Hearing Officer accepted that unintentionally selecting an incorrect file to be uploaded might be a clerical error. However, the Hearing Officer found that the evidence submitted lacked detail and supporting evidence, and this led to a finding that a clerical error had not occurred.
Obvious Mistake
In relation to an obvious mistake, the Hearing Officer considered that the mistake must be obvious on the face of the document to be amended, and this is to be considered from the point of view from the instructed reader. The Applicant contended that a person would clearly have noticed that there was an obvious mistake in the application because a party would have not intended to file the same design twice. However, the Hearing Officer found that there is nothing to suggest an error, let alone an obvious one, or how such an error ought to be corrected. In this regard, the instructed reader would not be able to determine what figures should have been submitted.
Take Aways
This case highlights the importance of ensuring that the appropriate file and documents are submitted, and that this may not always be rectifiable by claiming an obvious mistake or clerical error. Significant evidence is required to support any request, and mere assertions are not sufficient. Clerical errors must be explained, corroborated and substantiated. Finally, an error and the correction thereof must be apparent from the filing; it is insufficient that a mistake would have merely been ‘obvious’.
If you have any queries or questions regarding design applications, then please do not hesitate to contact MBIP.
