28.3. Hearings: Disputes over whether the design was new and distinctive at the priority date

If a customer wishes to be heard on a decision about to be made before a design is registered, such as an adverse formalities finding, they are entitled to a hearing. This does not happen very often but (under s 148 and reg 11.22) the Registrar must give the customer an opportunity to be heard before making a decision that goes against them.

Any person may request that a registered design be examined (s 63(1)). When the person requesting examination is not the owner, this is known as a third party request. Third party requests are handled as disputes between the parties, normally by the designs examination area of the Designs Office.

When an examiner completes the examination, we will inform both parties of their intention to either revoke the design or issue a certificate of examination. The parties then have 1 month to request a hearing on the examiner’s decision. If there is a request for a hearing, the file is passed to the Oppositions and Hearings section to hear the dispute.

The procedure will be essentially the same as for s 52 disputes where both parties will be submitting evidence.

However, as both the examination requester and the registered owner are already parties to an existing dispute, there is no need to first establish whether there is a plausible case or whether either of the parties intends to contest. Instead, the matter will generally proceed directly to evidence discovery.