D03.14 Material provided by a 3rd party

Date Published

Pursuant to s.69, a 3rd party may provide the Registrar material relating to whether a design is new and distinctive. This mechanism is rarely used, for reasons that include:

  • providing the registrar with material might be equivalent to informing the owner of a potential infringer in the market place; and
  • a third party who is aware of relevant material might make a strategic assessment that their commercial interests are best served by not filing the material.

The various issues associated with filing material under s.69 are:

  • Two purposes are served by the filing of the material.
  • the examiner is expected to have regard to any such material when examining the design; and
  • third parties have access to material that ‘someone’ thinks is relevant to the newness and distinctiveness of the design – particularly if they are considering issues of infringement or validity.

In the examination process, such material is no more than ‘potential’ citations – to be considered with other potential citations found during a search. In some cases, the material will be the most relevant material identified; in other cases the examiner may find more relevant material in their search. In any event, the examiner will indicate on the case file their assessment of the relevance of the material – especially if no objection of newness or distinctiveness is raised on the basis of that material.

  • Material may be filed at any time after a design has been registered. [s.69(1)].

It is highly unlikely that material would be filed before registration (because a design is not OPI prior to registration). However if such material was filed, public interest considerations prevent the Registrar from simply ignoring or returning the material. Consequently the Registrar will handle the material as if it was filed after registration.

The requirement that the material be provided in duplicate is important, as the copy is sent to the owner – s.69(3)(b). Where the requestor only provides a single copy of that material, the Registrar may treat the request as not being in accordance with the approved form – and act under regulation 11.27(3)(a) to return the documents to the requestor. It may be assumed that the Registrar will return the documents unless the amount of material to be copied is very small.

It is highly unlikely that material would be filed before registration (because a design is not OPI prior to registration). However if such material was filed, public interest considerations prevent the Registrar from simply ignoring or returning the material. Consequently the Registrar will handle the material as if it was filed after registration.

  • Approval from the Registrar is required for the submission of physical evidence – s 69(2)
  • The material should be accompanied by evidence of the date of publication.

Establishing the date of publication is critical to determining whether the design is new or distinctive.

To be effective, the evidence must be able to stand on its own. That is, the certainty about the publication date must be of the same level expected of a citation found in a search. Evidence of the type ‘I first saw this document on yyyy-mm-dd’ is merely evidence of the publication date. It is not prima facie proof of the publication date – even if asserted in a Statutory Declaration.

In situations where establishing the publication date requires detailed consideration of evidence, it is likely that proper consideration can only be given in a hearing under s.67(2). Note that the party filing the material can only be heard under s.67(2) if they have also requested examination.

  • The material should be legible.

If the copy of the material that is provided is of poor legibility, the Registrar may act under regulation 11.27(3)(a) and return the documents to the requestor. Alternatively the Registrar may treat the request as having been filed, and examine on the basis of the material supplied to the extent that the disclosure in those documents can be clearly identified.

  • The person filing the material does not need to request examination. [s.69(1)].
  • The person filing material has no right to be heard in the examination proceedings.

The right to be heard in relation to an examination is limited to the owner, a third party who requests examination, and persons entered on the Register as having an interest in the Design – see Dictionary definition of ‘relevant parties’, as used in s.67(3) and s.68(2). While s.68(4) requires the Registrar to hear the Owner before revoking the registration, any ‘relevant parties’ would be entitled to be heard at such a hearing – but not a person who has merely filed material under s.69.

  • There is no requirement, and there should be no expectation, that the Registrar will initiate examination as a result of the material filed.

A 3rd party might think that the material they have provided clearly demonstrates the design lacks newness and distinctiveness – and urges the Registrar to examine the design ‘in the public interest’. In effect, the 3rd party is trying to have the design examined without having to pay the examination fee.

A design cannot be enforced before it has been examined. An un-examined design has no presumption of validity.  Consequently there is no public-interest benefit to justify the registrar initiating examination of a design merely because a 3rd party files material that is said to establish invalidity. Rather examination occurs as a result of the private interests of the owner in being able to enforce their design, or of the private interests of a commercial competitor wanting to manufacture or sell a similar (or the same) product.

Accordingly, where a 3rd party files material under s.69 and urges the Registrar to examine the design, the 3rd party should be advised that examination will not occur unless and until they (or another person) requests examination and pays the relevant fee.

  • The material must be retained on file for 6 years after the term of registration of the design has expired.]

The 6-year period corresponds to the limitation period for infringement specified in s.71(4).