D13.1 Overview of ownership disputes

Date Published

The designs Act provides 3 mechanisms for dealing with disputes relating to the ownership of a design, before the Designs Office.

While the ALRC report envisaged that disputes over ownership should be dealt with in examination {see paras 7.19 to 7.21}, the 2003 Act has substantive provisions to deal with such disputes. These provisions are similar to provisions in the Patents Act 1990.

s. 29 relates to disputes about how an application will proceed. The outcome of a determination under s.29 is a direction that applies with respect to that particular application – it does not result in a new design application being filed.

s. 52 is a provision that allows a third party to assert that they are an entitled person in relation to the design (whether or not some or all of the owners of record are entitled persons). The outcome of the proceedings is revocation of the design, with a declaration identifying the person(s) the Registrar is satisfied is the proper owner. When a declaration is made, the people identified in the declaration may file a new application for a Design pursuant to s.54. the priority date of the design in that application is the same as it had in the application in which it was first disclosed.

s. 30 is a mechanism for recording an assignment prior to registration, which usually is uncontroversial and proceeds on the basis of a copy of the assignment document being filed. Under the 1906 Act, a dispute over the validity of a pre-registration assignment could only arise before the Registrar in the context of recording an alleged assignment – as in Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 (6 January 2005). However under the 2003 Act any such dispute would be dealt with under s.29.

Most ownership disputes are an inter partes matter that is resolved by way of evidence and a hearing. The legal issues involved can be quite diverse and complex, and it is usually highly desirable for a party to such proceedings to have legal advice. Furthermore, parties need to be aware that they are exposed to an award of costs against them if they are unsuccessful. An award of costs is enforceable as a debt [s.128], and if the other party has legal representation an award of costs in that party’s favour could be many thousands of dollars.

An unrepresented person has a particular difficulty if they invoke s.29 to assert they are an entitled person in relation to a design application which hasn’t been published. This is discussed in D13.2.2 below.