When parties have commenced relevant proceedings in relation to a design, the Registrar cannot revoke registration (s 52(6) or 68(5)), begin to examine a design (s 63(3)) or continue to examine a design (s 63(4)) unless the court orders examination of the design. A suspension will typically only be available if both parties consent, or if at least one party does not consent, the court proceedings would need to be shown to effectively duplicate the issues before this office. In either case, a suspension must be for a definite period (which may be renewed upon further request).

‘Relevant proceedings’

‘Relevant proceedings’ are court proceedings in which parties are disputing issues to do with infringement, revocation or validity of the design. The officer who handles court matters will usually decide whether the proceedings are ‘relevant proceedings’ after carefully considering all of the relevant court documents.

If the officer determines that the proceedings are not relevant, they will let the parties know of the decision as soon as is practicable. The Registrar will then handle the dispute in the normal way.

If the officer determines that the proceedings are relevant, the next steps will depend on the type and status of the dispute – that is, whether:

the dispute is an entitled persons dispute (post registration) (s 52(6))
the examination has not commenced or is being conducted (s 63(3) and (4))
the examination has been completed (s 68(5)).

Entitled persons disputes (post registration)

Under s 52(6) the Registrar cannot revoke a registration if relevant proceedings have commenced. However, the Registrar can still hear and determine the matter. If the determination is that registration should not be revoked, proceedings can be finalised in the normal way.

If the Registrar determines that a registration will be revoked, the registration will not be revoked until the relevant proceedings have concluded (and, if applicable, the appeal period has passed).

Examination has not commenced or is being conducted

Under s 63(3) and (4) the Registrar cannot commence or continue an examination if relevant proceedings have commenced. The parties should be told that examination is on hold and will not commence (or resume) until the relevant proceedings conclude (and, if applicable, the appeal period has passed).

Examination has been completed

Under s 68(5) the Registrar cannot revoke a registration if relevant proceedings have commenced.

If the Registrar has already completed the examination and intends to issue a certificate of examination, we should issue the certificate in the normal way.

However, if the Registrar intends to revoke the registration, the registration will not be revoked until the relevant proceedings have concluded (and, if applicable, the appeal period has passed).

After court proceedings have concluded

The Registrar can continue the examination of the design when court proceedings have concluded (unless the court has revoked the design). The Registrar will determine the time period for completion of the examination.

If there is material before the Registrar that the court considered and found to be insufficient to establish ground for revocation, the Registrar will almost certainly adopt that conclusion (although there is some room for argument here since issue estoppel, which prevents a party from having the same issue determined more than once, does not apply in these circumstances).

The examiner cannot assume that a design is valid just because there have been court proceedings that have concluded without the design being revoked. This is because:

material before the Registrar may not have been before the court
relevant material before the court may not have been judicially considered by the court – for example, there may have been consent orders or a default judgement because a party failed to appear (see Data dot v Alpha MicroTech (2004) 59 IPR 402).

The examiner should only consider disregarding material that has been judicially considered as evidenced from the decision of the court. Even then, we need to remember that a court is bound by the strict rules of evidence, whereas a tribunal (such as the Registrar) may have regard to probative evidence of any kind. The general rule is that a tribunal that is required to decide an issue will be in breach of that obligation if it merely adopts the decision of the judge on the same issue (Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126).

It is therefore possible for the Registrar to reach a conclusion that contradicts one that a judge has reached.