D03.1 Overview

Date Published

Examination of a design occurs any time after a design has been registered. The examination is in respect of whether the design is a ‘registrable design’ [as per the requirements of s.15], and whether any of the grounds referred to in s.43(1) apply to the design [Reg 5.02 and s.65(2)(b)].

When examination has been requested, an examiner will examine the design where the request fulfils the requirements of reg 5.01 and the applicable fee has been paid. This examination will include a search in respect of newness and distinctiveness, and will consider any material provided by the person requesting the examination.

If the Registrar is satisfied that a ground for revocation has been made out, an examination report will be issued setting out the grounds of revocation [s.66(2)]. The registered owner may respond to that report – either by making amendments to the Register to remove the ground for revocation, or providing arguments contesting the examination report. If a request to amend is filed, the Registrar will then reconsider the design as if the amendments have been made. In principal, there is no limit to the number of examination reports that may issue.

If the Registrar is satisfied that a ground for revocation has not been made out, or would be removed if proposed amendments are allowable and were made, examination is ‘completed’. The relevant parties are notified that the Registrar intends issuing a certificate of examination. If no party then seeks to be heard, a certificate of examination will issue [s.67].

If the Registrar has issued an examination report, and the examination has not been completed within the relevant time (normally 6 months from the date of the first examination report, but see reg 5.04), the registration of the design ceases [s.48(1)(a)]. However an extension of time under s.137 is potentially available to obtain further time for completion of the examination.

If the Registrar has issued an examination report, and either

i. the owner contests the grounds of revocation by requesting a hearing; or

ii. the Registrar sets a hearing in respect of the examination

and the Registrar is subsequently satisfied that a ground for revocation has been made out, the registration of the design may be revoked. [s.68]. Note that the time for completion of examination cannot be extended by way of s.137 after revocation has occurred.

D03.1.1 Certificate of examination, and ‘certified’

The end result of examination is the issuance of a Certificate of examination. This certificate is a prerequisite for the owner commencing any form of court proceedings for infringement [s.73(3)(b)] or revocation [s.93(2)], applying for a compulsory licence [s.90(2)], various applications under the crown use and acquisition provisions [s.98(3), 101(2), 102(5), 106(5)], and applying for rectification of the Register [s.120(5)]. It also has a particular significance in the context of threats [s.77(3), 78(a)].

Note that a certificate of examination is automatically revoked if, following a subsequent request for examination, the design ceases for failure to complete that examination within the prescribed time [S.48(4)].

Where a certificate has been issued, it is common for the associated matter to be referred to as having been certified. In this respect, the certificate of examination relates to the fact that examination has occurred – and nothing more. In particular, a certificate of examination does not constitute an assertion by the Registrar that the design is definitely a registrable design under the Designs Act.