D15.4 Surrender by consent - and ownership matters

Date Published

One of the scenarios for an offer to surrender is the existence of a dispute over where the registered owner is an entitled person. In this situation:

  • The Registrar may make a declaration under s 54(2) of the Designs Act 2003 (Cth) that another person was an entitled person at the time the design was registered; and
  • That person may file a new application for that design, with that design having the priority date of the surrendered design.

Where an offer to surrender is made as a result of such a dispute, the parties may seek to have the matter dealt with by consent. That is, both parties agree between themselves that the registered design should be surrendered, that the Registrar should make a relevant declaration under s 54(2), and that a new design should be filed under s 55.

A consent agreement between the parties cannot require the Registrar to make a declaration under s 54(2). The Registrar can only make such a declaration if she is satisfied on a factual basis of who was the entitled person at the time the design was first registered. Accordingly, the relevant party (or parties) will need to provide the Registrar with material that positively demonstrates the identity of the entitled person at the time the design was first registered – sufficient for the Registrar to be reasonably satisfied of that person’s entitlement. In this regard, mere assertions are insufficient; conversely the extent of information that might be required in a full hearing is not required. Rather there should be a declaration from a person with relevant knowledge of the facts, setting out the basis of the person’s entitlement. The declaration will need to be of sufficient detail to infer the basis for why the original owner was not an entitled person – so that the Registrar can be satisfied that the original owner was not an entitled person (which is a prerequisite to the making of the declaration).

Having regard to the dire consequences to the parties if the offer to surrender is accepted, and subsequently the Registrar refuses to make a declaration under s 54(2) – the Registrar will, if asked, provide an opinion before accepting an offer to surrender, about whether information proposed to be filed in support of the declaration would satisfy the Registrar that a declaration should be made.