D03.13 Intention to Certify

Date Published

Where the Registrar is satisfied there are no grounds of revocation made out, or would be removed if the register was amended as requested, examination is completed [s.65(3)(b) and s.48(1)(a)].

Before examination is completed the following need be satisfied:

  • The amendments are allowable under s.66(6);
  • The design is a registrable design [Section 65(2)(a)];
  • The design is not in a class of designs prescribed by regulation 5.02 [Section 65(2)(b)];

Before a Certificate of Examination is issued:

  • A notification under s.67(2) was issued to the relevant parties, allowing them an appropriate time  to request to be heard [s.67(3)]. No party has requested to be heard.
    - OR -
  • No notification under s.67(2) was issued, as the only Relevant Party was the Registered Owner.
    - OR -
  • The decision of the delegate following a hearing under s.67(3) is that a Certificate of Examination should issue.

The Registrar must notify the owner and any ‘relevant parties’ that a certificate of examination is to issue [s.67(2)]. ‘Relevant parties’ are:

  • The registered owner of the design;
  • The person who requested examination; and
  • Each person who is entered on the Register as having an interest in the design.

[see s.5 (Definitions) of the Act.]

Where the examination was requested by the owner, and there is no person entered on the Register as having an interest in the design, there is no purpose served by notifying the owner that a certificate of examination is to issue. Rather, the Registrar will issue a Certificate of Examination forthwith.

The notification must include details of any proposed amendments to the Register [s.67(2)]. The notification to a third party will also contain (by way of courtesy) a brief explanation of why the Registrar considers it appropriate to certify the design having regard to the material provided by the requestor when they requested the examination;

The notification will set a deadline for requesting to be heard. That deadline will usually be set at 1 month from the date of the notification . A different period might be set in exceptional circumstances. However a very short period would be unreasonable from the requestor’s perspective; and a significantly longer period may be unreasonable from the perspective of an owner wishing to commence court proceedings. While it is open for the Registrar to reset the time period, the Registrar is unlikely to entertain requests to change the period without evidence of the type that would justify an extension of time under s.137.

The passage of the deadline for requesting to be heard does not result in the certificate of examination being deemed to have issued. The Registrar must act under s.67(3), and remain satisfied that the certificate should issue. In practice, the Registrar will usually wait for a small number of days after the specified deadline before issuing the certificate of examination – to ensure all mail filed prior to the deadline has been acted upon. If a person files a request to be heard together with a request for an extension of time (s.137) after the deadline has expired, but before the Registrar has actually issued the certificate of examination, the Registrar must deal with the extension of time request before issuing the certificate. [see British Sky Broadcasting v Registrar of Trade Marks 58 IPR 216].

The Registrar expects a request to be heard to be in writing. However the Act and regulations do not in fact require such a request to be in writing. Where a 3rd party requests a hearing orally:

  • The file should be appropriately annotated;
  • An ITP should be issued immediately – with advice that no action to set the matter for hearing will occur until the fee is paid; and
  • The owner and any other relevant party informed of the oral request for hearing.