D12.5 Rectification of the Register by a court

Date Published

Under s 120 of the Designs Act 2003 (Cth) a person may apply to a court for orders requiring the Register to be rectified. The grounds under s 120 are different from the grounds of revocation under s 93, and can be invoked in a range of miscellaneous circumstances.

The Registrar would not normally be involved in the court proceedings, even though she has a right of appearance [s 120(3)]. However a party might seek the Registrar’s advice on the form of orders that might be made by the court – to ensure the orders can be given practical effect. Such requests are generally to be encouraged – but they must be referred to the Hearings section for action.

Under s 120(4), the Court is required to give a copy of the order to the Registrar – who must give effect to that order. However that giving of effect must necessarily be cognizant of relevant court procedures – in particular, appeals, and stays. Practical issues that can arise are:

  • A party (rather than the Court Registrar) serves a copy of the order on the Registrar. Generally speaking, if it is clear that the document served on the Registrar is genuine (and bears the Court seal), the appeal period has expired, and no appeal has been filed, the Registrar will act on the court orders.
  • A party ‘demands’ the orders be implemented ‘immediately’. This will typically arise when a successful party wants orders revoking a design to be implemented before the design owner files an appeal against the decision. In such instances the Registrar will deal with the matter in a manner that is open and transparent to all parties to the court proceedings. It should be noted that:
  • The Registrar is not obligated to give instantaneous effect to the court orders (unless the court orders expressly require such immediacy);
  • The Registrar has no entitlement or obligation to wait until the end of the appeal period to ascertain whether an appeal is filed, before giving effect to the court orders;
  • The Registrar is entitled to notify the other party of the receipt of the orders, and of her intention to give effect unless a Stay application is made within a short period of time – and will generally do so;
  • In any event, if the orders were not provided to the Designs Registrar by the Court, the Designs Registrar is entitled to take the position that she will not take any action until the court has given her a copy of the orders in accordance with s 120(4).

Any situations where such issues arise are to be referred to the Hearings section immediately.