D13.5 Application by Entitled persons after revocation

Date Published

It is frequently the case that the successful party will want to obtain Design protection in respect of the Design that has been revoked.

There are constitutional issues that preclude the Registrar from having the power to ‘forcibly’ transfer the rights in a registered design from one person to another. However there is no such barrier to the Registrar having the power to revoke a design right (see R v Quinn; Ex parte Consolidated Food Corporation [1977] HCA 62; (1977) 138 CLR 1), and granting a new Design right to a different person. This is the scheme applied in the Designs Act 2003.

Where a declaration has been made under s.52, the person(s) found to be entitled at the date the earlier design was registered merely file a new request for a Design. That application is processed in the same manner as for any new application for a Design. However:

i. The applicant will need to advise the Registrar at the time of filing (or at the latest, before registration) that they are claiming entitlement from the earlier design by way of s.55, and identify that earlier design(s) – so that the priority date and term of the design can be set on that basis. [After Registration, a request to amend the Register is unlikely to be allowable.]; and;

ii. The application must have with it a request for publication or registration. Otherwise it will almost certainly lapse at filing, since the priority date will most likely be more than 6 months prior to the filing date;

For the purposes of renewing the registration, the time period computed under s.47 is similarly based on the filing date of the original application from which the s.55 application was derived.