21.4. Satisfied: Reasonable doubt, balance of probabilities and uncertainty

Date Published

Reasonable doubt and balance of probabilities

‘Being satisfied’ does not mean ‘having absolute certainty’. That is, it is logically possible to be satisfied that a ground for revocation exists even where there is an element of doubt (the Designs Act does not entail any ‘benefit of doubt’ considerations).

For this reason, incoming submissions arguing the examiner’s decision should focus on the presence or absence of ‘being satisfied’ that a ground for revocation exists rather than on raising doubt about the presence of a ground for revocation.

Also, it is the examiner’s assessment that is relevant, not that of the owner or agent. Owners or agents need to persuade the examiner by making a reasoned argument based on evidence that no ground for revocation is made out. The owner’s or agent’s personal views of the merits of the case are irrelevant.

This does not mean that an examiner should maintain an objection just because a submission has not argued against it. Examiners must always reappraise the validity of an objection at each report stage.

In discussing the standard to be applied in examining a patent, the Ergas report Review of the intellectual property legislation under the Competition Principles Agreement (2000) recommended moving from a standard of benefit of doubt to one of balance of probabilities (pp 166 and 167). This recommendation was implemented in the Patents Act 1990 (Cth).

Sections 67 and 68 of the Designs Act 2003 use the same language (being ‘satisfied’) that was used to implement the Ergas recommendation in relation to the Patents Act. That is, the Designs Act implemented a balance of probabilities test for examination that is consistent with the rationale for the balance of probabilities test in the Patents Act.



In situations where there is uncertainty as to whether a citation discloses an important visual feature, the Registrar is unlikely to be satisfied that a ground for revocation has been made out.​​​​​​​


In Sportservice Pty Ltd [2007] ADO 6, when looking at a citation by the examiner, the hearing officer was unable to determine what shape a key visual feature was based on. This contributed to the hearing officer’s decision that they were not satisfied that a ground for revocation had been made out. The hearing officer states at 15 [emphasis added]:

"Superficially, the present design appears to lack distinctiveness over the cited bicycle rack. However I cannot determine whether the cited rack is based on round or square tubing. And the collar section of the design appears more prominent in the actual product than in the representations (with those representations fairly representing the actual product) – such that it does have a noticeable impact on the overall impression of the product. In these circumstances I am not satisfied that a ground of revocation has been made out." 

Amended Reasons

Amended Reason Date Amended

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