Defending Against Infringement Allegations in Australia

Registering a design in Australia is an important step to protect the unique look and feel of your product. But registration isn’t always the end of the story. Competitors or third parties may challenge your design rights by arguing that the design isn’t valid or that you weren’t entitled to register it.

What is a design dispute?

A design dispute is a formal challenge made by someone who believes your design should not have been registered. It doesn’t matter whether your design is still in the application stage or already registered, disputes can be raised at any point.

The law allows “any person” to dispute a design registration. This broad access ensures that only valid, new, and distinctive designs are protected by law.

Common grounds for disputes

Design disputes typically arise from one of three core issues, each of which challenges the validity of the registered rights. The first and most common ground is that the design is not new and distinctive. In such cases, the challenger argues that the design closely resembles existing designs or lacks the originality required for registration. If the design fails to create a substantially different overall impression compared to prior art, its registration may be vulnerable.

The second ground involves contested ownership. Here, another party claims that they are the true creator of the design, not the registered applicant. This situation often emerges in professional relationships, such as with former employees, business partners, or contractors, who assert that they contributed to or originated the design.

The third ground relates to entitlement to apply. A challenge may be raised on the basis that the applicant lacked the legal authority to file the design in the first place. For example, if the design was developed during the course of employment, the employer may claim ownership and argue that the employee had no right to register it independently.

All three grounds directly affect the legitimacy of the design registration. If a challenger succeeds on any of these points, the registration may be revoked or, in some cases, transferred to the rightful owner. These disputes show the importance of establishing clear authorship, originality, and legal entitlement before filing a design application.

When can a dispute arise?

Disputes can be raised at any stage of the design process, where after filing, i.e. once your design is published in the Australian Official Journal of Designs, third parties can review it and lodge objections.  And also, after registration, i.e. even after a design is officially registered, disputes can be raised if someone believes relevant evidence was overlooked or if new information emerges.

This means that the risk of challenge remains throughout the life of your design right.

How does the dispute arise?

When a dispute is raised, the process typically goes as follows-

Submission of a Dispute

The challenger submits a formal request, providing documents, evidence, or arguments to support their claim. Evidence can include earlier designs, witness statements, or industry knowledge suggesting the design isn’t original.

Notification to the Design Owner

IP Australia shares the dispute details with you, the registered owner. This ensures you have an opportunity to defend your rights.

Decision to Defend or Not

At this point, you must decide whether to actively defend against the allegations. If you do not respond, the dispute may proceed without you, and your design rights may lapse or be revoked.

How to defend against a design dispute?

If you choose to defend your registration, the following steps come into play-

Evidence Gathering

Both you and the challenger must gather evidence to support your claims. This may include documentation showing how and when the design was created, proof of originality compared to existing designs, contracts or employment agreements confirming ownership rights, or perhaps expert opinions on distinctiveness.

Exchange of Evidence

Each party’s evidence is shared with the other. This transparency ensures both sides can prepare responses and address each other’s arguments.

Hearings

Either party can request a hearing. Hearings can be written hearings, i.e. where arguments and submissions are presented in writing, or oral hearings, i.e. where parties appear before a hearing officer.

If you request an oral hearing, you must pay a fee and prepare submissions. At the hearing, the officer considers all evidence, arguments, and legal points before making a decision.

After reviewing everything, the hearing officer issues a decision. This may result in revocation or cessation of your design right, transfer of the design to another party, or confirmation that your design remains valid, allowing it to proceed to registration or remain registered.

Consequences of not defending

If you choose not to take part in the dispute process, the risks are significant. The challenger’s case may proceed uncontested, and your design right may be revoked, cease entirely, or be transferred into someone else’s name.

This outcome could leave your design unprotected, making it impossible to enforce against infringers.

Possible Outcomes of a Successful Defense

If you defend successfully, several positive outcomes are possible, i.e. your application continues to registration, or if already registered, it remains valid.

A certificate of examination may also be issued, strengthening your enforcement rights and the dispute is formally dismissed, with you retaining ownership of the design.

Successfully defending your design not only preserves your rights but also puts you in a stronger position to deter competitors from infringing.

Strategic considerations when defending

Defending against allegations requires more than just reacting, it requires strategy. Here are some important points to consider-

• Ownership Records, i.e. maintain clear records of the design’s creation, including drafts, sketches, design briefs, contracts, and employee agreements. These can be crucial in proving ownership if challenged.
• Evidence of Distinctiveness, i.e. keep evidence showing how your design differs from existing designs in the market. This may include expert analysis, market surveys, or design comparisons.
• Deciding Whether to Defend, i.e. not every dispute is worth fighting. In some cases, it may be better to negotiate a settlement or amend the application rather than undergo a lengthy hearing. An IP professional can help you assess the merits of the case and the costs involved.
• Professional Representation, i.e. the dispute process involves detailed legal arguments about originality, distinctiveness, and ownership. Having an experienced design lawyer or IP attorney represent you greatly increases your chances of success.

Consider a scenario where an Australian start-up registers a design for a new ergonomic chair. Soon after, a competitor disputes the registration, claiming the design isn’t new because similar chairs already exist.

The start-up decides to defend. They present evidence showing the chair’s unique combination of features and submit expert reports comparing it to existing chairs.

Whereas, at the hearing, the competitor relies on older designs but cannot prove substantial similarity.

The hearing officer rules in favour of the start-up, confirming the design’s distinctiveness. The design remains valid, and the start-up later obtains a certificate of examination, allowing them to enforce their rights in court.

This example shows the importance of evidence and proactive defense in securing your design rights.

Work with us

A design right is only as valuable as its enforceability. If you don’t defend your registration, you risk losing exclusivity over your product’s appearance. Defending also sends a strong signal to competitors that you are committed to protecting your intellectual property.

At LexGeneris, we help applicants not only register their designs but also defend them when disputes arise. From assessing ownership claims to preparing evidence for hearings, we ensure your designs have the protection they deserve.

Your creativity deserves a strong defense, because protecting your design doesn’t stop at registration. So, contact us now for a free consultation.