Revocation of a Registered Design in Australia

Registering a design gives its owner valuable rights, but registration is not absolute. A design registration can be revoked under different circumstances, either by the Registrar of Designs or through the courts.

What does revocation mean?

Revocation refers to the legal cancellation of a registered design, effectively treating it as though it was never validly registered. Once a design is revoked, the owner forfeits all exclusive rights associated with it, including the ability to use, license, or enforce the design against others.

Revocation can occur under different circumstances. It may happen voluntarily, where the owner chooses to surrender the design registration. Alternatively, it can be administrative, i.e. initiated by the Registrar, if it is determined that the design should not remain on the register due to non-compliance or other legal grounds. Lastly, revocation may be judicial, resulting from a court order issued during a legal dispute or challenge to the validity of the design.

In each case, the outcome is the same, i.e. the design loses its protected status, and the rights holder can no longer rely on it for enforcement or commercial advantage.

Revocation by Surrender under Sec 50

A registered owner can choose to give up their rights by offering to surrender the design (sec 49). Once the Registrar receives an offer to surrender, they must notify relevant persons prescribed by the regulations, allowing those persons an opportunity to make submissions.

The Registrar can only accept the surrender and revoke the design after this process is complete. However, surrender is restricted in two situations, i.e. if court proceedings involving the design are ongoing, revocation cannot occur without the court’s or parties’ consent and also, if a compulsory license is in force, the Registrar cannot accept surrender.

The Registrar’s decision under this section can be appealed to the Federal Court or the Federal Circuit and Family Court.

Revocation After an Ownership Dispute under Sec 52

Disputes about entitlement are one of the most common reasons for revocation. A design may be revoked if the registered owner was not entitled to register the design or another person, or additional persons, should have been registered as owners.

This can arise in several scenarios-

• Both registered owners were not entitled.
• One owner was entitled but another was not.
• Some entitled owners were omitted altogether.

A person who claims entitlement must apply under sec 51 for revocation. The Registrar then notifies the registered owners and gives them a chance to respond, considering the evidence from both sides. Also, holding a hearing if necessary.

If the claim succeeds, the design is revoked. That said, the rightful owner may then re-file for registration and keep the original priority date.

In John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5, the hearing officer found that Jarvie, the designer, was the only entitled person, not the registered owner. As a result, the designs were revoked.

Revocation Process under sec 52

The revocation process for a registered design is rigorous and involving several structured steps. It begins with the application, where the applicant must clearly outline the grounds for revocation and support their claims with relevant documentation. This initial submission sets the foundation for the Registrar’s assessment.

If the Registrar finds that the application presents a plausible case, the registered owner is formally notified. If the case lacks sufficient detail, the applicant may be asked to provide additional information or further evidence to substantiate their claims. Once notified, the owner has one month to respond and indicate whether they intend to contest the revocation. If no response is received within that timeframe, the Registrar may proceed with revocation without holding a hearing.

Should the owner choose to contest, the process moves into the evidence exchange phase. Both parties are given two months to submit their evidence and an additional two months to respond to the other side’s submissions. All evidence must be presented in the form of declarations, as required under regulation 11.26.

In rare instances, the Registrar may order the production of documents or allow for the cross-examination of witnesses to clarify contested issues. This step is not common but may be necessary in complex or highly disputed cases.

The hearing itself is overseen by a hearing officer, with both parties given the opportunity to present their arguments. Following the hearing, the Registrar typically issues a decision within three months. If either party is dissatisfied with the outcome, they may appeal to the Federal Court under section 52(7), generally within 21 days of the decision being issued. This structured process ensures that revocation decisions are made transparently and based on thorough consideration of all relevant facts.

Revocation after Examination (sec 68)

If a design has been examined and a certificate issued, the Registrar can revoke it where a ground for revocation is made out, and that ground cannot be fixed by amending the Register.

This process includes notifying the owner, giving them an opportunity to be heard and allowing amendment of the registration if that would remove the problem.

The Registrar cannot revoke while relevant court proceedings are pending. Any revocation under this section is appealable.

Revocation Following a Compulsory License (sec 92)

If a compulsory license has been granted under sec 90, an interested party may later apply to court to revoke the design. The court may do so if the reasonable requirements of the public with respect to the design have not been satisfied and the registered owner has no satisfactory reason for failing to exploit the design.

This ensures that designs are not locked up and unavailable for public benefit.

Revocation in other circumstances (sec 93)

A court can revoke a design after examination and certification in broader circumstances, including-

• The design is not a registrable design.
• One or more original registered owners was not entitled.
• Other persons were entitled but omitted.
• The registration or certificate was obtained by fraud, false suggestion, or misrepresentation.
• The design is a corresponding design to an artistic work where copyright has ceased.

However, under sec 93(3A), revocation for entitlement grounds will only be ordered if the court finds it just and equitable.

Registration by the correct owner after revocation

If a design is revoked following an entitlement dispute, the rightful owner can apply for registration in their own name. To do this, they must file a new application and notify the Registrar that they are claiming priority under sec 55. It must also be ensured that the new application is accompanied by a request for registration, since the priority date will often be more than six months earlier.

The new registration will retain the original priority date, meaning that third-party filings in the meantime do not take precedence.

Work with us

So, revocation of a registered design in Australia is a serious step with lasting consequences. It can arise from voluntary surrender, ownership disputes, examination findings, compulsory licensing, or court challenges.

At our firm, we guide applicants not just through the design registration process but also through disputes and revocation risks, ensuring that their rights are secured and enforceable from the beginning. So, contact us now for a free consultation.