Anyone can submit material that concerns whether a design is new and distinctive (s 69). They do not need to request an examination in order to file material (s 69(1)).

The Registrar does not have to initiate an examination as a result of material that a third party has filed.

A third party may be providing material they think clearly demonstrates that the design lacks newness and distinctiveness. They may feel this justifies the Registrar initiating an examination in the public interest. However, a design owner cannot enforce their design right until their design has been examined, so there is no public interest benefit to justify the Registrar initiating examination of a design in this case.

In effect, the third party may be trying to have the design examined under the Registrar’s initiative so they do not have to pay the examination fee. In such cases we will advise the third party that the design will not be examined unless they (or someone else) requests examination and pays the correct fee.

Material submitted by a third party must be retained on file for 6 years after the registration of the design has expired. This is because the limitation period for infringement is 6 years (s 71(4)). The examiner must have regard to that material when examining the design.

In practice, third parties rarely submit material, mostly because doing so might also alert the owner to the existence of a potential infringer in the marketplace.

Requirements for filing material

The requirements for filing material are the same as those for third party requests for examination.

When material can be filed

Material can be filed at any time after a design has been registered (s 69(1)). It is very unlikely that material would be filed before registration (because the design will not be publicly available on the Register). But if someone does file material, we cannot simply ignore or return it. We must handle the material as if it was filed after registration.

How third party material is used during examination

In the examination process, this type of material is treated as a potential citation. It is considered along with other potential citations found during a search.

In some cases, this material will be the most relevant material identified. In other cases, the examiner may find more relevant material in their search.

The examiner will include in the case file an assessment of the relevance of the material that was submitted.

Date of publication

The person submitting the material will need to send evidence of the date of publication. The date of publication is critical to determining whether the design is new and distinctive.

The evidence must be able to stand on its own. That is, the certainty about the publication date must be of the same level expected of a citation found in a search. Evidence of the type ‘I first saw this document on yyyy-mm-dd’ is not proof of the publication date – even if it is asserted in a statutory declaration.

If a detailed consideration of evidence is needed to establish the publication date, it is likely that this level of consideration can only be given in a hearing (s 67(2)). Note that the party filing the material can only be heard if they have also requested an examination.