3 The Registration System, Procedure and Practice

Process for Registering a Design

Obtaining an enforceable right in a design is not straightforward. Australia has a multi-step process for the registration and protection of designs. If a design owner wishes to have their design registered, they must first submit an application to IP Australia online (or in paper form) and pay the relevant fee. The application must be in the approved form and contain enough information for it to be entered on the Australian Designs Register (the Register).

After an application is submitted to IP Australia, it does not automatically go through an examination process to determine whether the design complies with the requirements under the Act to be a registrable design (unlike that seen with patents and trade marks). Instead, there are two overarching processes an applicant must go through to obtain a legally enforceable right to the design: registration and certification.

To act as an overview, the diagram below represents the general lifecycle of applying for registration.

Once an application is filed with IP Australia, the submitted details are verified through a formalities assessment before entering the Register as ‘registered’. The assessment involves checking the application contains all the correct information to meet the requirements for registration. The assessment is critical to ensuring registered designs are clear and succinct — especially when offering exclusive rights to their owner.^[1] Passing the formalities check, the design becomes registered for an initial period of five years. At the end of the five years, the registration can be renewed for an additional period for a maximum of ten years. The registered design ceases upon the end of the ten years (or the initial five if not renewed).

Owners of designs can only enforce their rights in a design after the Design Office has examined the registered design to ensure it is new, distinctive, and none of the grounds of refusal apply.^[2] The registered owner must request that their design be examined through this second process, called certification. A certified design allows its owner to enforce the rights to the design in infringement proceedings.

Certification is optional but can only occur once a design is registered. Any person may request an examination, including its owner or a third party. As seen in Chapter 1, the certification rates are low compared to the number of registrations each year. IP Australia has suggested this low certification rate could likely be due to applicants avoiding examination (and the fees associated) until there is a need to enforce the design rights.^[3]

It is important to note that for applications filed prior to 10 March 2022, applicants could elect to ‘publish’ their designs. As an alternative to registration, the publication option was intended to only publish the design to the public through the Australian Official Journal of Designs and the Australian Design Search database. After electing publication, the owner had no enforceable rights over the design and could not elect certification at a later date. The low uptake of applicants electing for publication saw its removal with the introduction of the Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 (Cth).

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Explore the registration process in more detail with the interactive flowchart below. Slide the bar across to flow to each part of the process. Discover the different pathways throughout the process and the outcomes of the various processes. More details about aspects of the process are described below.

The Designs Office

The Australian Designs Office administers the design registration. The Designs Office sits within IP Australia — the government agency responsible for administering and registering patents, trade marks, designs, and plant breeders’ rights. Chapter 10 of the Act contains the administrative provisions for the system, which established the Designs Office,^[4] a Registrar of Designs,^[5] and Deputy Registrars.^[6] The Registrar of Designs is responsible for administering the Designs Act 2003 and related legislation. The responsibilities of the Registrar include:

• Handling the filing and processing of design applications. This involves checking that applications meet the necessary legal requirements.
• Registration and publication of designs. The Registrar registers the design that satisfies the formalities check and publishes details in the Australian Official Journal of Designs. This publication serves to inform the public about new design registrations.
• Maintain the Designs Register. As a record of all designs that have been applied for and registered, the Registrar must make the documents available for public inspection.
• Examining registered designs. Upon request, the Registrar can conduct a substantive examination of a registered design to ensure it meets the legal requirements for certification.
• Handling disputes and conducting hearings. The Registrar will resolve disputes on the validity of a registered design or ownership challenges. This can include hearings and decisions on these matters.
• Renewals and amendments. The Registrar manages the renewal of design registrations and any amendments, such as changes in ownership or design details.

There must be at least one Deputy Registrar,^[7] with all the powers and functions of the Registrar under the Act (except for the Registrar’s power of delegation).^[8] The Registrar may, by written instrument, delegate all or any of the Registrar’s powers or functions to a prescribed employee or a prescribed class of employees.^[9] Of course, one Registrar cannot conduct all of the activities outlined above on their own. In practice many of these activities are conducted by employees of IP Australia. For example, Examiners conduct examinations of registered designs.

Making an Application to Register a Design

If a design owner wishes to have their design registered, they must submit an application form containing enough information to allow their design to be entered on the Register. An applicant must pay a relevant fee for applying. Applications can be submitted in two ways, either electronically through IP Australia’s online portal called ‘Online Services’ or in paper format by post. The latter process commands a higher fee as it involves more administrative work for IP Australia.^[10]

Unsurprisingly, more than one person may be entered on the Register as the registered owner of a design.^[11] Each person, however, must be entitled to be entered on the Register as the registered owner of a design. Pursuant to the Act, five categories of applicants are entitled to be the registered owner of a design. Most commonly, the designer is the owner.

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Practically, this means when filling out the application form, it is essential to nominate the owner of the design correctly. If any of the registered owners on the original application when it was first registered were not an entitled person, the Registrar or a court may revoke the registration.^[12]

When filing a design application, it must (i) meet the minimum filing requirements (discussed below) and (ii) be submitted by an entitled person. The application, however, may include more than one design and identify more than one product. Section 22 of the Act sets out the various types of design applications. Depending on the type of application filed, each will have different formalities checks (discussed below).^[13]

One design, one product

The most common type of application is a single design for a product. As shown in an example below for the design of a game board.^[14]

Explore a Registered Design

A common design applied to more than one product

An applicant can file an application that discloses a single design applied to more than one product. The application will, therefore, list more than one product, and the representations will depict how the visual features are common to each product.

Explore a Registered Design

Multiple designs, one product

On the other hand, an application could name one product but depict more than one design applied to the product. The example below shows three different designs for a chair. In this case, there will be a separate fee for each design.

If an applicant files these designs together in a single application, they will be ‘linked’ until registration and will eventually be allocated separate design numbers.

Explore a Registered Design

Multiple designs, multiple products

An applicant may file an application that contains more than one design applied to more than one product. This type of application can only be made out if all the products named in the application belong to the same Locarno class (classes discussed below), and the entitled person(s) are the same for each design. If the designs were for different products under different classes, the application would be required to delete or exclude the designs that are not related. The example below shows 8 different designs for 11 products (all in class 7). Although the designs are in a single application until registration, each design will eventually be allocated its own design number and will have a separate fee payable.

Further Designs

Despite the allowance for different types of applications under section 22, if an application contains more designs than the applicant has stated, the application contains ‘further designs’.^[15] The Regulations define ‘further designs’ as ‘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’.^[16] Suppose an application is submitted nominating a single design for a single product, but it becomes evident from the representations there are multiple different designs for the product. In that case, the applicant can pay the additional fees for each design to convert to a multiple-design application.

For example, consider the representation for a design application below. The application contains a design of an automobile. However, the ornamentation differs between the two. The application, therefore, contains two different designs, one green car and another red car. During the formalities assessment, IP Australia will contact the applicant to advise the application contains further designs.

Further designs were identified in the Australian Design Office decision in Aristocrat Technologies Australia Pty Limited.^[17] Aristocrat filed a single design application and named the product as ‘A bank of gaming machines’. The Registrar determined that the four individual gaming machines were represented in the application.^[18] Therefore, four different product designs were represented. The Registrar considered that there was no physical connection between the four machines and that it contained three further designs.^[19]

When further designs are identified in an application, IP Australia will ask the applicant to correct the application and choose between removing the identified further designs or combining the designs into a multiple-design application and paying the higher fee.^[20]

Explore a Registered Design

Excluded Designs

An applicant can request to amend an application to exclude one or more designs contained in it.^[21] Pursuant to section 23, an applicant can file a new and separate application for the excluded design(s). Although a request can be made to exclude one or more designs from an initial application, at a minimum, one design must remain in the initial application.^[22]

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Any designs excluded from the original application will be refiled, and the priority date of the original application will be retained. To maintain the original priority date, however, the design in the refiled application must be identical to what was previously applied for, and the original application must maintain at least one design.

Explore a Registered Design

Applying with IP Australia

When submitting an application, it must contain the minimum filing requirements.^[23] Specifically, the application requires (i) an indication that what is filed is intended to be a design application; (ii) a representation, or information that appears to be a representation, of each design being applied for; (iii) information that allows the identity of the applicant to be established; and (iv) information that allows the applicant to be contacted.^[24]

As mentioned above, two ways of applying with IP Australia exist. Applications are commonly submitted electronically through IP Australia’s Online Services.^[25] Applications submitted online will always meet these requirements, as the online form ensures the correct information is collected.

The application form includes the following details.^[26]

• design number
• date of submission
• number of designs (single/multiple)
• applicant name
• address
• address for correspondence (if required)
• address for service
• statement of entitlement (where applicant name is different from owner name*)
• name of representative or agent
• designer name
• product name/description
• statement of newness and distinctiveness (if provided)
• representations
• convention claim (if applicable).

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Explore the application form with the interactive below. In particular, examine the types of information that are collected and how it is collected in the form.

Representations

An essential element of the application is the visual representation of the design. Representations are ‘a drawing, tracing or specimen of a product embodying a design or a photograph of such a drawing, tracing or specimen’.^[27] Once a design is registered, it is entered in the Designs Register. Representations help the applicant demonstrate what they are seeking protection for, support the Registrar in understanding the visual features of the design and overall appearance of the product, assist interested parties in locating designs, and help the wider public know what designs are protected.

Representations are, therefore, critical sources of information on the visual features of the design and how they form to give the product its overall appearance. The representations, however, are not the design as such. Deputy Registrar Herald explained in Sportservice Pty Ltd:^[28]

While a specimen might typically be a product embodying the relevant visual feature, drawings are not. A drawing is used to ‘represent’ the product and the visual features; it allows the design to be comprehended. Consequently, it is important to recognise that the level of visibility of visual features in representations (considered as drawings) may be different (that is, either more or less visible) from the level of visibility in a real product bearing the visual features. And the assessment of distinctiveness must be conducted on the basis of the design (that is, products bearing the visual features) applying the standard of a person who is familiar with the product to which the design relates – not on the basis of a simple comparison of representations.

An application must include at least one representation of the design. Applicants can, however, submit any number of representations. The representations submitted need to show the visual features of the design clearly and consistently.^[29] Emmett J in Keller v LED Technologies Pty Ltd described that a design must ‘…appear with reasonable clarity, and without the necessity for unreasonably prolonged or complicated series of deductions from the registered representations’.^[30] For applications filed on or after 10 March 2022, the representations must meet the requirements in the Designs Formal Requirements Instrument.^[31]

Representations must:

• Clearly show the visual features.
• Show the design as applied to the relevant product and match the product name.
• Show the product fully assembled and unexploded in at least one view.
• Show an accurate and complete picture of the design. This includes clearly showing the visual features of the design.^[32]

For example, these are the representations for the design of a board game.

Representations for design number 201913268 for a ‘game board’

IP Australia typically receives photographs, line drawings or computer-aided design (CAD) drawings.^[33] Applicants will submit multiple representations that show a range of views of the design to display its features thoroughly.^[34]

Drawings should be accurately drawn and show the entire product’s visual features.^[35] Drawings submitted are typically in the format of solid and broken (dashed or dotted) lines.^[36] Applicants habitually use solid and broken lines to identify new and distinctive features of design. For example, broken lines would be used to indicate generic features of a product that would not be considered new and distinctive when compared to designs that have come before it.^[37] If an applicant uses broken lines, IP Australia will require a statement of newness and distinctiveness be included in the application (discussed in more detail below).

 

Colour is not listed as a visual feature of a design. Colour, however, can be an important distinguishing feature. The following example demonstrates that two designs can have a different visual appearance with the presence of colour. Representations must consistently use colour. Otherwise, further designs could be identified in the application and command an additional fee.

Photographic representations must be clear, in focus,^[38] and taken against a neutral background, plain and contrasting with the product.^[39] Images derived from computer-aided designs are considered official representations compared to 3D models. Although IP Australia will accept a 3D model to aid in the examination process, 2D representations will be submitted.

Classification of designs

The culmination of submitting the information and representations in the application will help the Design Office classify the design. Given that the visual representations form the basis of the design registration, we need a way to search designs efficiently. As described in Chapter 1, Australia uses a system of classification based on the International Classification for Industrial Designs (known as the Locarno Classification System). The Designs Office will classify a design using the Australian Designs Classification Codes and base the classification on the product disclosed in the application. Products are grouped under the classification system based on similar functions or purposes.^[40]

The Australian classification system enables the Registrar to search the Designs Register for prior art when examining. Examiners in other intellectual property offices overseas may also use the classification system for the same reason. Legal representatives regularly use the classification system to search for similar designs when advising a client on the registrability of a design or monitoring the Register to request examination of third-party designs. The public can also efficiently navigate the Register to understand the registered and protected designs.

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The classification system used to search the Australian Designs Register is covered in more detail in Chapter 6. However, explore the structure of the Australian Design Classification Codes with the interactive below.

Fees

Applicants must pay fees at different stages of the registration process. The current fees for applications and requests are in Schedule 4 of the Designs Regulations 2004 (Cth). The fees have been summarised below.

Statement of Newness and Distinctiveness

Another interesting aspect of the application form is the ability of an applicant to submit an optional statement of newness and distinctiveness (or SoND). An applicant can identify particular features of a design as new and distinctive that advance it beyond designs that came before it. Many question the need for the SoND.^[41] Ultimately, it is tied to the assessment of distinctiveness. The statement identifies particular parts of the design for the examiner to focus on.^[42] The requirements of a design to be new and distinctive are covered in more detail in Chapter 5. A common format of a SoND can be:

‘Newness and distinctiveness reside in the feature of shape and configuration shown in solid lines in the accompanying representations’

‘Newness and distinctiveness reside in the features of ornamentation of the shaded areas shown in the representations’

Both statements specifically call out the categories of visual features that make it new and distinctive and how to identify them in the representations.

It is important to note that the statement should not be inconsistent with the representations contained in the application. For example, a statement identifying aspects of ornamentation and the representations are isometric drawings only showing the shape of the product will be queried in a formalities notice.^[43]

Registration Procedures & Formalities Assessment

Design Application Timeline with Status Indicators, Mitchell Adams (CC BY-NC)

Once an application is submitted, it is checked to ensure it contains the basic information that enables identification of the design intended to be registered, including a representation of the design and information that identifies the applicant and how they can be contacted.^[44] When applying online, the system will not let the applicant submit until the minimum filing requirements are met.^[45] If the minimum filing requirements are met, the application will be allocated a design number and a filing date. For most applications that IP Australia receives, the priority date will be the date the application is filed unless the applicant enjoys a conventional priority (discussed in more detail below).

IP Australia will send the applicant a notice informing them that the application meets the minimum filing requirements.^[46] Under the Act, the Register must also publish the details of the application.^[47] The bibliographic information will be published on the Register of Designs (applicant name, designer name(s), agent name, product name, filing date and any convention details, including the relevant priority date) and not the representations of the design. In practice, the application will appear on the Australian Design Search database and is listed as ‘awaiting formalities’. Full details will be published on the Register once the design is registered.^[48]

Once an application is submitted, the default outcome is that it will proceed to registration.^[49] When an applicant files an application, they have the option to file a request for registration with the application or submit a request up to six months after the filing date. Those applying online are presented with this option as the last step before submitting (see the interactive above). If an applicant fails to request registration, the applicant will automatically proceed to registration. The applicant is deemed to have requested registration.^[50]

If the applicant has not requested registration, they can discontinue the application and request an application withdrawal.^[51] If the application contains more than one design, the applicant can elect to withdraw one or more of those designs. The applicant has six months to withdraw the design or designs, after which the application will proceed through the registration process.^[52]

After registration is requested or deemed to have occurred, a formalities assessment is conducted on the application. At this time, the application will be listed as ‘under formalities’ on the Register. The purpose of the check is to assess the application on its compliance with the legislation, ensuring that it contains all the correct information.^[53] A formalities officer conducts the assessment. The assessment is vital to ensure that registered designs are clear and succinct.^[54] In addition, there is a public interest in ensuring that the Register is maintained as an accurate record of registered designs that meet the statutory requirements. The formalities officer will conduct the assessment by comparing the application information against the ‘Formalities check’,^[55] and the ‘Formal requirements’.^[56]

The formalities check includes confirming that:

• the design application is in the approved form
• the design application is in English
• the design application does not contain any scandalous matter or matter that might be taken to be scandalous
• the design application identifies, for each design, the product or products (bearing the design) sufficiently to enable each product to be classified in accordance with the Locarno agreement
• if the design application is for an excluded design, the application includes the design number for the initial application that the excluded design is based off
• if a specimen has been submitted as part of the application, it is mounted in a flat position on an A4 sheet, can be stored without damage and allows for copies to be made
• at least one representation of the design has been supplied
• the number of designs disclosed in the application is the number of designs identified by the applicant as being separate designs disclosed in the application.^[57]

The formal requirements for a design application require:

• full name of the applicants and the designers
• address for service
• contact telephone number
• representations and an indication of the number of designs
• Where there is a convention claim for priority, the basic information that confirms the number, country and filing date of the basic application
• Where an application is for a common design applied to more than one product, the application must include a clear indication of this, including a list of products

There are also some specific formal requirements for representations in the instrument.^[58] Read the instrument here.

In addition, the formalities officer will check the representations in the application and the applicant’s chosen product name to ensure it correctly specifies the product. At this point, a classification determination will be made.^[59] Although the representations and product name will drive this determination, the formalities officer will consider all information disclosed in the application.^[60] An Australian Designs Classification Code will be chosen based on class and subclass. If the subclass is further divided into sub-subclasses, one will be selected. If no suitable sub-subclasses are found, it will be allocated into the ‘Z’ sub-subclass.

If supplied, the suitability of the statement of newness and distinctiveness is checked. If the applicant claims priority from a basic application from a Convention Country, the details will be checked to ensure compliance. In addition, the application will be checked to ensure that the correct fee has been paid for the application. If further designs are identified, the applicant will require correction. Finally, the application will be assessed as to whether it should be refused under s 43 and reg 4.06. Refusal under these sections can be considered at formalities assessment and examination. The sections will be discussed in more detail in Chapter 4.

If the application passes the formalities assessment, the design will proceed to registration. The applicant is notified of the outcome and presented with a certificate of registration.^[61] In addition, the public is informed with an official notice published in the Australian Official Journal of Designs.^[62] Once the design is registered, the Registrar is then obligated to enter the particulars relating to the design in the Register.^[63] Having information and documentation on the Register enables public inspection of the design.^[64] In practice, this involves having all the information in the application made publicly available on the online Australian Design Search system.^[65] An entry on the database not only includes bibliographic information on the design (e.g. the product name), it includes the applicant-supplied representations.^[66] See, for example, the registered design for a board game from above.^[67]

If the application does not pass the formalities assessment, IP Australia will notify the applicant of the outcome and provide an opportunity for the applicant to correct any deficiencies.^[68] The Applicant can request to amend the application or respond in writing explaining why they consider that the application does not need to be amended.^[69] If the applicant does not respond within two months, the application will lapse and be listed as ‘lapsed’ on the Register.^[70] If the applicant does not satisfactorily amend the application following the Registrar’s notice,^[71] or satisfactorily respond to the Registrar’s report,^[72] the Registrar will refuse the application, and it will be listed as ‘Refused’ on the Register.^[73] Equally, the Registrar must refuse to register certain designs under s 43 and reg 4.06.^[74] The applicant can request a hearing if they receive an adverse formalities finding.^[75] It is rare, but the applicant is entitled to a hearing.

Amending an application before registration

Before a design is registered, an applicant may request amendments to the details in the application (for example, designer name detail, details of the applicant(s)) or details relating to the actual design (for example, the product name and representation(s)). Amendments could reflect changes in circumstance, address deficiencies or correct errors in the application. The amendment request must:

• be in writing;
• be clear that an amendment of a design application is being requested;
• set out the nature and extent of the proposed amendments; and
• be accompanied by:
  • A substitute document or representation incorporating the proposed amendments; or
  • A statement setting out the proposed amendments and the place at which each amendment is proposed to be made.^[76]

The only limitation is that the amendment must not alter the scope of the application by the inclusion of new matter.^[77] The majority of requests to amend under s 28 will be for the purpose of correcting issues raised in a formalities notice under s 41.^[78]

Term of Registration

The design is then registered for an initial term of five years from the filing date of the design applications.^[79] The term can be extended to a maximum of ten years from the filing date if the design is renewed.^[80] If the design owner does not renew the application after the initial five-year period, the registration ceases and will be listed on the Register as ‘Ceased’.^[81] After ten years, registration will cease.

During this period, the registered owner, at any time, may offer to surrender the registered design.^[82] The offer must be in writing,^[83] identifying the design number requested to be surrendered,^[84] and filed with IP Australia. The Registrar will publish in the Official Journal, a notice of the offer received to surrender the registered design.^[85] Any interested person may request to be heard in relation to the offer,^[86] and the Registrar is obligated to give the person an opportunity to be heard.^[87] If the Registrar accepts the offer to surrender the registration, it will revoke the registration and list it as ‘Revoked’ on the Register.^[88] If there is more than one registered owner, the offer must be made by all of the registered owners.^[89]

Certification and Examination

Until this point, the design owner does not have an enforceable right to the design. Suppose the owner wishes to commence an action to stop other people from using their design or a design that is substantially similar in overall impression. In that case, they must request examination of the design and have it certified. Certification is an optional process, where the Registrar will examine the design to determine whether a ground of revocation exists.^[90] Examination of designs is governed by sections 63-65.

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The registered owner can request an examination of the design and pay the applicable fee.^[91] The registered design will cease if the owner requests an examination and does not pay the prescribed fee.^[92] However, the registered owner is not the only party that can request an examination. Any third party, court or the Registrar may request the examination of a design.^[93] A ‘third party’ is a person who is neither the registered owner of a design nor a prescribed court.^[94] For example, a competitor or other interested party may request an examination to test the validity of a registered design.^[95] If a third party requests an examination, it will be fast-tracked.^[96] The examination fees are split evenly between the third party and the registered owner.^[97] If the registered owner does not pay their half of the fee, the registered design will cease.^[98] Registered owners and third parties may supply material in relation to the newness and distinctiveness of the design as part of their request for examination.^[99] For third-party examinations, any material provided will be sent to the registered owner.^[100]

It is possible for IP Australia to receive two requests for examination. Suppose examination is yet to commence after receiving a second request. In that case, the examiner will deal with both requests simultaneously and issue a single examination report to the design owner and a copy to the third party.^[101] If an examination has already commenced and a report has been issued, the examiner will do another examination for the second request and produce a further report containing all the grounds of revocation appearing in the first examination report.^[102]

Registered designs, however, are the only designs that can be registered.^[103] The Registrar will assess whether the design is a registrable design.^[104] A designs examiner will assess the design to determine whether it is new and distinctive by researching the prior art base for designs as they existed before the priority date of the examined design.^[105] The Registrar will also examine the design to ensure it is not of a type that cannot be registered.^[106]

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If the examiner is satisfied that neither ground of rejection applies to the design, they will issue a ‘clear’ report, a written notice to the registered owner to that effect, and a certificate of examination will be issued.^[107] If the examiner is satisfied that one of the grounds for revocation is made out, they will issue an ‘adverse’ report to the registered owner.^[108] After the report is issued, the owner is afforded the chance to respond to the examination report. The registered owner can contest the decision and rebut that a ground of revocation is made out. The owner, however, must address the issues in the report within six months of the date of the first examination report.^[109] If the owner does not respond in that period,^[110] the registration will cease.^[111] Equally, if the owner does not resolve the grounds for revocation with the examiner during that period, the registration will cease.^[112]

During the course of examination and a ground of revocation has been raised, an applicant may request an amendment to the registration in such a way that the ground of revocation would be removed.^[113] However, an amendment to overcome a ground for revocation must not: (a) increase the scope of the design registration,^[114] or (b) alter the scope of the registration by the inclusion of matter that was not in substance disclosed in the original design application, representations or other documents.^[115]

If a request to amend the Register has been made, the examiner first considers whether the amendments are allowable.^[116] Then, the examiner will consider whether the grounds of revocation are made out with or without the amendment. The examiner will issue a further report (either clear or adverse) indicating the grounds for revocation, both with and without the amendments. Again, the registered owner is afforded the opportunity to respond in writing. Where an amendment does not comply with s 66(6), they can make submissions as to why the amendments comply or propose different amendments.

During the six-month period, if the examiner remains satisfied that the design should be revoked, they will issue a revocation notice.^[117] The registered owner, however, can contest the grounds of revocation with a request for a hearing. Revocation during examination is uncommon. It is more likely that the registration will cease after the six months have elapsed.^[118]

As mentioned above, a design is assessed against s 43 in both the formalities assessment and examination. The examiner will consider whether the design falls within any one of the non-registrable categories under the legislation.^[119] This consideration is a prescribed ground of revocation,^[120] namely that a design should not have been registered.^[121] If the examiner raises this ground, the matter will progress to a hearing.^[122] If the Registrar refuses the design, it will be listed as ‘Refused’ on the Register.

IP Australia maintains a general principle that a registered owner may withdraw their request to examine a design.^[123] Those who requested the examination are the only party that can withdraw their request. A registered owner cannot withdraw a third party’s request to examine a design. The requester, however, must make the request to withdraw before the issuance of the first examination report. If the design examiner has completed the first examination report (either clear or adverse), the examination is considered to have occurred and the request carried out.

If, during the examination, the registered owner requests a hearing contesting the ground of revocation, the Registrar must hear the owner before revoking a registration.^[124] The registered owner may not be the only person interested in being heard during the examination. Any third party that may request examination or a third party entered on the Register as having an interest in the design can have a right to be heard. The Register will hand down their decision and provide written reasons that are accessible on Austlii. Either party (Registrar or registered owner) may appeal a hearing decision.^[125] Typically, a notice of appeal can be filed in the Federal Court or the Federal Circuit Court within 21 days of the decision.

On the other hand, if the examiner has determined that neither ground of revocation applies to the design and the registered owner requested an examination, the examiner will issue a certificate of examination. If a third party requests an examination or another party is listed in the Register as having an interest in the design (part ownership, a licence or a security interest), the examiner will issue a notice of intention to certify. A notice of intention to certify is a written notice stating that the Registrar intends to certify the design. It will be issued to all relevant parties with an interest in the design. The process provides a third party an opportunity to be heard to object to the certification. For example, if the third party believes the design is neither new nor distinctive and has passed the examination, it can object to that finding. The notice sets a period of one month for anyone to request a hearing in writing.^[126] Again, either party may appeal the hearing decision.^[127] If IP Australia receives no request to be heard, the examiner will issue a certificate of examination.^[128] The design will be listed as ‘Certified’ on the Register.

It is also possible that a request for examination is received after a design is certified. In this case, an examination will occur and will likely have the same result. However, the requester may provide new material relating to the newness and distinctiveness of the design that may show why the outcome should be different.^[129]

Convention Applications

As discussed in Chapter 1, Australia is a party to the Paris Convention for the Protection of Industrial Property. When examining the validity of a design registration, the Designs Office will compare the design to those in the prior art base — those designs that existed before the priority date of the registered design. For most applications, the priority date will be the date the application is filed in Australia. However, the priority date of an application can be earlier when an applicant has, before filing their Australian design application, filed an application to protect the design in another country that is a party to the Paris Convention (Convention Country). If the applicant files the Australian application within six months after the application in the Convention Country (known as a ‘basic application’), it will retain the priority date of the earlier application. Claiming a convention priority is entirely optional.