D03.6 Handling concurrent requests for examination

Date Published

Under the legislation it is possible for there to be concurrent requests for examination. It would generally be the case that at least one of the requests has been filed by a third party. The Registrar will deal with such requests in the following manner:

  • Where examination on the earlier request has not commenced, the examination of the earlier and subsequent request will be conducted at the same time, considering all matters raised in the various requests for examination. If a ground for revocation is made out, a single report will issue – with a copy being sent to the third party.
  • Where an examination report on the earlier request has issued, the examination of the subsequent request will commence in the normal manner – thereby raising any new issues at the earliest opportunity. Any matters raised in the earlier examination report will also be raised in the later examination. When the owner responds to the earlier examination, any grounds for revocation raised in the later examination will then be considered in that earlier examination. Consequently a certificate of examination will not issue unless all grounds for revocation raised in the various examination reports have been overcome. The final date for overcoming all grounds for revocation is the earliest date set under regulation 5.04 in respect of the various examinations. Once that date has passed, examination in respect of the other requests cannot continue as the registration has ceased [s.48(1)(a)].

Where plural requests for examination are filed, the person requesting the examination must pay the relevant fee. There is no basis for a fee reduction or waiver merely because there are other requests for examination pending, or that several examination requests are being dealt with concurrently.

Where a third party requests examination, the registered owner is required to pay a fee [fee item 4(b)] with the design ceasing if that fee is not paid. In general, the owner will be expected to pay the fee in respect of each examination request. However the Registrar may consider waiving this fee if there is reason to believe that the requests for examination are being filed in a manner intended to be prejudicial to the owner - for example, forcing an owner to let the registration cease because they can’t afford the plural examination fees. In this regard, relevant considerations would be whether the third party is filing a series of examination requests in circumstances where it would be reasonable for a single request to have been filed, or whether plural third parties are filing requests for examination all referring to substantially the same material in relation to the newness and distinctiveness of the Design.

Comment:
Under this arrangement for dealing with concurrent requests for examination, the Registrar will not be in a position of issuing a certificate of examination in response to one examination, while at the same time arguing that the design is not new and distinctive under another examination. That is, the Registrar will only get to a position of intending to certify if the Registrar considers that appropriate having regard to all pending examinations. It follows that all persons who requested examination will have a right to be heard under s.67(3).