25.4. Ownership disputes: Disputes where some designs have been registered or published

If all the designs in an application have been registered or published, the Registrar will not make any determination under s 29. In these cases, any ownership dispute is dealt with under s 52.

If only some of the designs in an application have been registered or published, the Registrar may make a s 29 determination relating to the designs that have not.

Note that a s 29 matter relating to a design that has lapsed will only be considered if there is already a request from the official owner on file to restore it under s 137. The Registrar will decide on the facts of the case whether to deal with the restoration request in parallel with or before the ownership dispute.

Disputes under s 52

Under s 52 a third party (the requestor) can claim they are entitled to be recorded as the owner or an owner of a design (an entitled person) at the time it was registered. It is a dispute between the parties that involves a hearing. Most ownership disputes that come before the Registrar are dealt with under s 52.

When a dispute under 52 arises, the oppositions and hearings section will assess the third party’s case. If it is without merit, the request is dismissed. If the third party puts an arguable case, the current owner/s of the design are given a copy of the request and asked whether they will contest it.

If the owner decides to contest the request, since this is about competing claims to ownership, evidence of each party’s positive case to ownership is usually provided at the same time. Then all parties are given an opportunity to file evidence in answer to the other parties’ case. However, sometimes the Registrar will require the requestor to provide their evidence first. In those cases, the owner of record will then provide evidence in answer and the requestor may be given an opportunity to file evidence in reply.

Parties can request that the Registrar allow further time for the preparation of evidence or that the Registrar allow a party to file further evidence. These requests will be dealt with on their merits.

Once the evidence is filed the matter will be set for a hearing. See:

• Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 7.
• Metroll Queensland Pty Ltd v Mark Nicholas Collymore, Courier Pete Pty Ltd [2008] ADO 9.
• Craige Jonathan Henrick v Richard Eaton Taplin and Craige Jonathan Henrick [2009] ADO 1.
• Extreme Kayaks & Watersports Pty Ltd v Viking Kayak International Pty Ltd [2010] ADO 1.
• Australian Fitness Supplies Pty Ltd v Rasheed Rane [2013] ADO 6.
• John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5.
• Manuel Canestrini v Ilan El [2020] ADO 2.