Third Party Challenges and Design Revocation

When a design is registered in Australia, it gives the owner exclusive rights over how that design is used and enforced. But registration does not guarantee that the design will remain secure forever. The law allows space for third parties to challenge the validity of a registered design, and in some cases, for the registration itself to be revoked.

How can third parties challenge a design?

Anyone, i.e. whether a competitor, a potential licensee, or even a member of the public,  can submit material relating to whether a registered design is new and distinctive (sec 69 of the Designs Act). Importantly, a third party does not need to request a formal examination of the design in order to provide such material.

For example, a business might submit prior art showing that the design is similar to something already in the market. While this may appear like an indirect way to push the Registrar into examining the design, the law makes it clear that submitting material does not force the Registrar to begin an examination. Unless an examination is formally requested and the relevant fee paid, the Registrar will not examine the design simply because material has been filed.

This system prevents third parties from avoiding the costs of requesting an examination, while still allowing them to alert the Registrar to potentially relevant information.

Nature of Third Party Submissions

Material submitted by third parties is essentially treated as potential evidence during the examination process. It might be highly relevant and even decisive, or it may be less useful compared to other prior art uncovered by the examiner’s own search. In all cases, an examiner must carefully consider the submission, assess its relevance, and record this assessment on the file.

Key requirements include-

• Date of publication evidence– The third party must provide clear proof of when the material was published. Vague statements such as “I saw this in 2019” are insufficient. The evidence must be strong enough to stand as reliable prior art in an examination.
• Filing period– Material can be filed at any time after a design has been registered. While technically possible before registration, it is rare, as the design is not yet publicly available on the Register.
• Retention– Once filed, the material is kept on record for six years after the design registration expires, in line with the limitation period for infringement claims.

That said, third parties rarely file such material. Doing so might alert the design owner to the fact that they are being watched, or worse, to the presence of a possible infringer.

How is third-party material used in examination?

When a registered design is examined, third party material is treated just like other citations. The examiner considers it alongside their own search results. If the material is the most relevant piece of prior art, it may form the basis of a revocation ground.

The examiner is legally required to give genuine and objective consideration to all material submitted (Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1). This means personal opinions or the tone of the submission are irrelevant – only the substance matters.

If the examiner believes the material establishes that the design lacks newness or distinctiveness, a ground for revocation may be raised against the design owner.

Responding to grounds for revocation

If an examination reveals issues, the design owner is notified and usually given six months to resolve them (sec 48(1)(a), reg 5.04). They can amend the design registration to remove the issue or contest the ground by submitting arguments explaining why the ground is not valid.

If the problem is not resolved within the timeframe, the registration will lapse. Owners can apply for extensions (sec 137), and in cases where last-minute responses are filed, they may lodge a precautionary request for a hearing.

When Can Revocation Occur?

Revocation of a design registration is a serious outcome, but it can occur in several ways-

• During examination– If the owner cannot overcome the objections raised within the examination period, the design will cease.
• At an impasse– If no progress is possible, i.e. for example, the grounds for revocation are clear and cannot be fixed, the Registrar may issue a notice of intention to revoke. Owners then have 21 days to request a hearing.
• Outside examination– Revocation may also occur where the owner voluntarily surrenders the registration, if a court orders revocation, or in cases involving disputes over entitlement to ownership.

Before revocation, the Registrar must hear the design owner (sec 68(4)). Other relevant parties, such as third parties who formally requested examination or are entered on the Register as having an interest, may also be heard.

The Role of Hearings

Hearings play an important role in the revocation process. If the Registrar intends to revoke a design, the owner can request a hearing to present arguments or evidence in their defense. A third party who has simply filed material under sec 69 does not have the right to be heard unless they have also requested examination.

Hearings ensure fairness by giving the owner (and other entitled parties) an opportunity to argue against revocation before a final decision is made.

Appeals

If a design is revoked and the owner disagrees with the decision, they have avenues for appeal. They can take the matter to the Administrative Appeals Tribunal or to the Federal Court, depending on the circumstances.

Appeals serve as a safeguard, ensuring that decisions are not only consistent with the law but also open to independent review.

Work with us

So, the third-party challenge and revocation framework exists to keep the design system fair and credible. Without it, outdated or unoriginal designs might block competition and innovation. At the same time, the system gives owners fair opportunities to defend their rights and correct issues where possible.

For design owners, the best protection lies in two things, i.e. first, ensuring that the design application is carefully prepared and truly new and distinctive; and second, knowing how to respond quickly and effectively if a challenge does come. With the right approach, design owners can safeguard their rights and maintain strong protection for their creative work. Working with an IP professional is crucial to navigate the process. So, contact us now for free consultation.