D11.5 Registrar's Discretion - s.137(2)

Date Published

D11.5.1 General Comments

Subsection 137(2) of the Designs Act 2003 (Cth) uses the word 'may', and is therefore a discretionary power. That is, even though the terms of para (a) or (b) of subsection (2) may be satisfied, the Registrar is not obliged to grant an extension. There are a number of important factors to be considered here, including the purpose of the extension, the private interests, and the public interest.

The decisions of the courts concerning the approach to be taken to the exercise of discretion to extend time are well established; Sanyo v Commissioner of Patents (1996) 36 IPR 470 at 479. Importantly, the exercise of discretion cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213).

In New Clear Water Pty Ltd v Atlantis Corporation Pty Ltd [2001] APO 48 (21 September 2001), the delegate, in applying Sanyo, exercised the discretion under s.223 despite the lack of justification for the extension. The delegate considered that it is 'more important to consider the consequences of extending or refusing to extend time than debate the reasons why the act was not done in time': per Davies J in Chalk v Commissioner for Superannuation (1994) 50 FCR 150, at 156, with whom Black CJ and Cooper J agreed. Similar comments are to be found in Comcare v A'Hearn (1993) 119 ALR 85, particularly at 88. Actions of the agent of a principal should not necessarily be regarded as being the actions of the principal: A'Hearn's case. A legislative provision providing for the exercise of a discretion to extend time is beneficial in nature and should be applied beneficially: Davies J in Chalk's case at 155.

D11.5.2 Lack of Purpose

The granting of an extension is the granting of an indulgence, and an indulgence should not be granted that serves no useful purpose. For example, where it is manifestly clear that it would not be possible to issue a certificate of examination under the terms of the Act, an extension of time should not be granted to extend the time for completion of examination. Another example is matters in which the Registrar has become functus officio (see D11.5.4 Functus Officio).

D11.5.3 Private and public interests

In exercising discretion, it is appropriate to have regard to the public and private interests. This is a particular issue where it is clear that there is a third party interested in the design – such as a third party who has requested examination, and the owner is seeking an extension of the time for completion of examination. In situations where the request under s 137 is not to be advertised under s 137(4), it may be appropriate for the Registrar to invite that third party to comment on the extension, and for that party to be heard as a matter of choice, pursuant to the requirements of reg 11.22(1). The public interest can best be related to the question of "delay" (see D11.5.5 Delay).

D11.5.4 Functus Officio

As a general rule, administrative decision-makers cannot re-make a final decision unless the relevant legislation permits them to do so. The decision-maker, having made a final decision in the exercise of a statutory power, is said to be functus officio with respect to that power. In this regard, the Designs Act does not make provision (either express or implied) for the Registrar to withdraw the registration of a design, or a certification of examination.

However, in some circumstances the purported decision in relation to registration or certification may have no legal effect, and so can be treated as if it had not been made at all. An administrative decision that involves jurisdictional error is a decision that lacks legal foundation and so is properly 'regarded, in law, as no decision at all'. See the High Court decision Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 187 ALR 117.

In British Sky Broadcasting Limited v The Registrar of Trade Marks [2002] FCA 1566, an application for an extension of time to file an opposition was filed late on the day before registration of the trade mark occurred. Registration occurred early the next day, before the application came to the attention of the relevant staff. The Federal Court held that the Registrar was not empowered to register the trade mark without first considering the application for extension of time.

D11.5.5 Delay

Inordinate delay in filing an application for an extension of time, or in filing available relevant material in support, is potentially detrimental to the public interest. Consequently, it is expected that where such a delay has occurred an explanation in declaratory form will be provided. In any event, the Registrar will need to be satisfied that any further or unnecessary delay which has hampered having the matter dealt with at the earliest possible date was not caused to any significant extent by the actions of the applicant for the extension of time (Sanyo v Commissioner of Patents (1996) 36 IPR 470). It should be remembered that because of the provisions of reg 11.13(1), strictly the application is not made until such time as the declaration is filed.

D11.5.6 Protection Provisions

The provisions of s 139 provide for the protection of parties who took definite steps to use a design commercially after registration of the design had ceased. It is a relevant consideration when exercising the discretion under s 137 that anyone who has made commercial use of the design is protected under these provisions. (Sanyo v Commissioner of Patents (1996) 36 IPR 470).