Updating Ownership or Applicant Details in Australian Design Registrations

Keeping ownership and applicant details accurate in the Australian Designs Register is crucial for protecting and enforcing design rights. Errors or omissions in ownership records can cause serious complications down the line, from invalid registrations to disputes over entitlement.

Accurate Ownership Records

The registered owner of a design has the exclusive right to use, license, and enforce it. If ownership details are incorrect or incomplete, the design’s legal status may be undermined. For example, a missing co-owner could raise questions about the validity of the registration or whether infringement proceedings can even be initiated.

In practice, ownership updates usually arise in three situations-

• A clerical error or oversight during application (such as a co-owner being left off).
• A need to add or recognize additional designers.
• A transfer of ownership due to assignment, inheritance, or operation of law.

Each of these situations has its own rules and procedures under the Designs Act 2003 and accompanying regulations.

Adding a New Registered Owner

If an owner’s name was omitted from the application due to a clerical error or an obvious mistake, it may be possible to add that owner later under regulation 9.05(2). The key here is to demonstrate that the omission was accidental, and that it was always the applicant’s intention to include that owner’s name on the Register.

However, the Registrar will not simply take someone’s word for it. Declarations such as “it was always our intention to include this person” are not sufficient. Instead, clear and convincing evidence must be provided. This might include draft agreements, correspondence, or other documentation showing that the individual was known at the relevant time but left off due to clerical oversight.

If the Registrar is not satisfied that a genuine mistake occurred, the request will be refused. In that case, the omitted owner may need to apply to the court for an order to amend the Register under section 120 of the Designs Act.

That said, correcting the Register in this way can sometimes transform an otherwise invalid design into a valid one. Because of this, the Registrar will only make corrections where the evidence is strong.

Adding a New Designer

Ownership corrections often overlap with requests to add new designers. This typically happens in large companies, where identifying every contributor to a project is difficult.

Where additional designers are employees of the registered owner, adding them as designers is usually straightforward. Since the employer already owns the design as an assignee, there is no need to change the ownership details.

However, if the request is to add a new designer as a co-owner, the situation is more complex. The Designs Act, particularly section 93(3)(c), makes it clear that this type of change cannot be justified as a clerical error. If the party genuinely has an ownership claim, it must be resolved through assignment or legal proceedings, not by simply adding them to the Register.

Disputes Over Ownership Before Registration

Sometimes ownership issues surface before the design has even been registered. Under section 30, a change of ownership before registration can be recorded. If disputes arise, they are handled under section 29 of the Designs Act.

These disputes usually fall into two categories, i.e. disputes between joint applicants who cannot agree on how the application should proceed and disputes involving third parties claiming they should be included as an applicant or joint applicant.

In both cases, all parties are given the chance to present evidence and respond to each other’s claims. Once evidence has been filed, the Registrar will set the matter down for a hearing.

A well-known case, Somnomed Ltd v Commissioner of Patents [2006] FCA 765, confirms that the Registrar must ensure procedural fairness by giving each party a reasonable opportunity to argue their case.

If the Registrar decides that a third party is entitled to be included, the original application is simply amended rather than requiring a new one.

Assignments and Transfers of Ownership

After registration, ownership changes are usually recorded through assignments or transfers. Under section 114 of the Designs Act 2003, a registered owner (or an assignee) may request the Registrar to record an assignment of an interest in the design. Similarly, ownership can pass by operation of law or by will, and the new owner may request the Registrar to record their interest.

When such a request is made, the Registrar must notify all other registered owners of the design. If another owner objects in writing within the prescribed timeframe, the assignment will not be recorded until the dispute is resolved.

Assignments of registered designs are generally straightforward, but several common issues can complicate the process. These include errors in the assignment document, such as incorrect names, missing signatures, or ambiguous terms. Time-limited or partial assignments can also create confusion, especially when the scope or duration of the rights transferred is unclear or contested.

Entitlement disputes may arise involving later owners who claim a stronger or more legitimate right to the design than those previously recorded. Another frequent issue is when one co-owner assigns their interest in the design without obtaining consent from the other co-owners, potentially leading to legal challenges over the validity of the transfer.

When such disputes occur before the design is registered, they are managed by the Registrar under section 29 of the Designs Act. If the conflict arises after registration, it falls under the provisions governing ownership disputes and challenges to the validity of the registration. In either case, resolving these matters is essential to maintaining the integrity of the design rights and ensuring that enforcement actions are taken by the rightful party.

Limits of Corrections

Even where corrections are made under regulation 9.05, a design registration may still be invalid on other grounds, such as those listed in section 93(3)(b) and (c). In some cases, correcting ownership on the Register is not enough to cure underlying entitlement problems.

If evidence of clerical error or mistake is lacking, or if a dispute over entitlement goes beyond administrative correction, the parties may need to apply to the court for a binding determination. The court has wider powers to amend the Register and resolve complex disputes than the Registrar does.

Work with us

Correcting or updating ownership records may sound simple, but the evidentiary requirements and potential legal risks make it a technical process. Whether you need to add a co-owner, record an assignment, or resolve an entitlement dispute, our team can guide you through the process. We ensure the right mechanism is used, the evidence is properly prepared, and your design rights remain secure.

Contact us now for a free consultation.