D03.4 Which Designs may be examined?

Date Published

S.63(1) and (2) provide for examination of:

“a design that has at any time been a registered design”.

That is, examination is available in respect of a design that has at some time in the past or present been registered. However, pursuant to s.63(5) examination cannot proceed in the following circumstances:

i. The design has ceased for failing to be certified within the time allowed. Consequently, where a design has ceased for failing to be certified within the time allowed, examination cannot continue either in respect of that examination request, or in respect of any other pending examination request.

ii. The design has been revoked – except if the revocation was the result of an ownership dispute, and a declaration has been issued under any of sections 52, 53 or 54. [This removes any doubt that a design filed pursuant to s.55 may be examined despite the fact that the particular design had been revoked in the earlier proceedings.]

Additionally, examination under the 2003 Act is not available to designs registered under the 1906 Act. [s.151(3)(c)]

Examination under s.63 is expressly related to designs that have ‘at any time been registered”. The wording of s.63(1) expressly allows for the examination of designs that are no longer Registered Designs. However designs that have ceased through not having examination timely completed, or have been revoked, cannot be examined. [s.63(5)]

Where the term of the design has expired, or the design has ceased, there is a general question about whether the examination serves any purpose. S.71(4) provides a 6-year statutory limitation period for instituting court proceedings for infringement. If a request for examination is filed more than 6 years after the cessation of the design, prima facie there is no purpose to be served by the examination – and examination will not occur unless the requestor indicates a real purpose for the examination occurring.

There is no provision that allows for examination of a design application. The Registrar will not entertain requests to examine design applications.

Note:  S.71(4) provides a 6-year statutory limitation period for instituting court proceedings for infringement. As a result, an owner can initiate infringement proceedings after registration of the Design has expired or ceased - in respect of infringements that occurred during the life of the Design.