The Registrar has a wide discretion under s 63(2) of the Designs Act 2003 (the Act) to examine the registered design on their initiative. This will include even where a design already has a certificate of examination.

The discretion does not require the Registrar to consider the relevant matters in person. However, the discretion to examine on the Registrar's initiative will be exercised only by the Registrar in-person, a Designs Team Leader or otherwise delegated person.

The discretion will be exercised on reasonable grounds with each case being considered separately, taking account all the circumstances. 

It is important to note that the decision to examine a design under s 63(2) of the Act is separate to the examination itself, and any decisions that stem from the examination.

The usual requirements in s 63(3) and (4) apply and the Registrar will not examine the design, or continue to examine the design, if court proceedings have commenced in relation to the design.

Reasons for Registrar-initiated Examination

The Registrar will provide reasons where they seek to exercise the discretion. Reasons for examination on the Registrar's initiative could include:

New material has been found by the Registrar in a related activities after the initial examination of the design or related designs
An error has been made by the Registrar in registering a design
The registration contains scandalous matter
After a registered design fails examination or citations are raised, a person requests registration for the same or substantially the same design in another design application.

In deciding whether to examine on their initiative, the Registrar will consider all the circumstances, including:

(1) The perceived strength of potential citations

(2) The public interest

(3) Relative inconvenience suffered by the Owner or other persons

(4) Any other material provided to the Registrar.

Registrar-initiated Examination Process

Whilst potentially citable prior art may be identified, the Delegate must not simply proceed to a decision regarding substantial similarity or identicality and conclude an examination; see s 148 of the Act. Rather, the first step is that the Delegate will issue a general notice informing the Owner of the design that the Registrar is of the opinion that the design should be examined.

The Owner will be given a reasonable opportunity to be heard on the specific matter of whether an examination should take place. This will usually be a period of two weeks. Owners should contact the office in writing if an additional period of time is required. The Owner should notify the Registrar if they are aware that court proceedings have commenced.

Once a reasonable period has elapsed, a Delegate will then examine the design in the ordinary manner with the usual opportunities for the Owner to be heard on the substantive matter of any citations.

Fees

The usual requirements and fees regarding third-party requests made under s 63(1) will continue to apply. Generally, a third-party may not provide material regarding newness and distinctiveness and simply request the Registrar to examine under this section, without paying the usual fee.

Appeals

A person may be heard on the issue of whether there should be a re-examination. They can request a hearing on this matter within the period mentioned in the general notice which notifies them of the decision to examine the design.

An Owner may also appeal to the Administrative Review Tribunal or Federal Court.