25.7. Ownership disputes: Revocation after an ownership dispute

The Registrar will revoke a design if:

• the registered owner was not entitled to register the design, and/or
• at the time the design was registered, another person or other persons were entitled to be registered owners. If the design has multiple owners, this includes where:
• both registered owners were not entitled.
• one registered owner was entitled but one was not.
• more than one person was entitled and more than one person was not.
• all of the registered owners were entitled, but one or more other persons were also entitled to be registered owners (s 52).

For this to happen, the person who claims that they were entitled to register the design must apply to the Registrar (under s 51) for revocation of the registration on these grounds.

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The Registrar then:

• gives all the original registered owners a reasonable chance to respond.
• considers the evidence provided in the application and the responses.
• conducts a hearing if necessary.
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If the design is revoked, the person who was originally entitled to register it may now be entitled to file a new application for the design (see ‘Registration by the correct owner after revocation’ below). If so, the priority date will be the same as in the original application (s 55).

Examples

In John Michael Jarvie v Comtec Industries Pty Ltd [2018] ADO 5 the hearing officer found that, at the time of registration, the requester (the sole designer, Jarvie) and not the registered owner was the only entitled person to be entered on the Register as the owner of the designs. See s 52(2)(a).

Jarvie requested that the Registrar use discretionary powers under s 148 and reg 11.22 to transfer ownership of the designs. The hearing officer refused this request and indicated that if the designs had been at the application stage, ownership could have been transferred under s 30. Instead, under ss 21 and 55, the requester would need to apply for the designs and would be entitled to the priority dates that each originally had.

See also Manuel Canestrini v Ilan El [2020] ADO 2, where in addition to finding that the requester (Canestrini) was the only person entitled to be the registered owner of the design (s 52(2)(a)), the hearing officer determined that the same requester was not a designer or otherwise entitled to be the registered owner of a different design included in the proceedings.

Process for s 52 revocation requests

The Registrar has the right to decide in each case how to handle requests for s 52 revocation (see reg 11.24). 

(See Somnomed Ltd v Commissioner of Patents [2006] FCA 765 (23 June 2006), which concerned an identical provision in the Patents Act 1990.)

Figure 1 below shows the process for revoking a registration under s 52.

Request

Section 51 and reg 4.12 set out the requirements for requesting revocation under s 52.

The application must include a statement outlining the grounds for revocation under s 52. This statement should demonstrate to the Registrar that there may be a plausible case for revocation.

The applicant needs to be able to provide evidence to support their statement. For example, if their case is based on an alleged breach of a written agreement, they should be prepared to file a copy of the agreement later if and when the Registrar asks them to do so.

If the statement does not demonstrate a plausible case, the Registrar may ask the applicant to set out the grounds in greater detail. If the Registrar remains unconvinced that there is a case, but the applicant insists on pursuing it, the applicant will need to file all their supporting evidence.

If Registrar determines that there is a plausible case – or if the applicant insists on pursuing it anyway – the owner will be notified and requested to answer within 1 month whether they intend to contest it.

If the owner does want to contest the application, they will need to file evidence supporting their entitlement to register the design.

If the owner does not contest the application, the Registrar may be able to deal with the matter ex parte – i.e. issue a declaration and revoke the design without requiring more evidence or a hearing.

Evidence

When the owner indicates that they will contest the request, the Registrar sets the process for submitting evidence. Typically, that will be:

• Each party has 2 months to file the original documents plus one copy. In some cases (see Request above) the applicant’s evidence may already be received.
• When each party has filed their evidence, a copy is sent to the other party.
• Each party then has 2 months to file their evidence (original plus one copy) in response.
• A copy of the evidence in response is sent to the other party.
• A hearing date is set for the matter.

The evidence is in the form of declarations. Regulation 11.26 sets out the requirements for a declaration.

Either party can ask for more time to prepare evidence or for permission to file further evidence. The Registrar has broad discretionary powers to deal with these requests on their merits. However, the Registrar strongly expects relevant evidence to be filed as promptly as possible and takes a very unfavourable view of those who withhold evidence until the last minute.

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Production of documents

Under s 127(1)(c) the Registrar has the power to issue a notice requiring the production of a particular document or article that could be relevant to the proceedings. This notice can be:

• at the request of either party in the dispute.
• issued to either party or to a third party who is not involved in the proceedings.

This does not happen often. Points to note based on Registrar of Trade Marks / Commissioner of Patents practice are:

• Requests for the Registrar to issue a notice to produce should be made as early as possible in the proceedings.
• If there is any objection to the notice, the relevant point is whether there is a lawful excuse for not complying with it (s 134(2)). If necessary, the Registrar will conduct a hearing to determine whether there is a lawful excuse. This hearing is not about forcing production of the document; only a court can do this. If the outcome of the hearing is that there is no lawful excuse, the Registrar can draw an adverse inference from the refusal to comply.
• Where possible, the Registrar will encourage the parties to reach agreement between themselves about what will be produced. This avoids the costs and inconvenience of a formal determination.

Cross-examination

If one of the parties in the dispute requests it, the Registrar can summon a witness for cross-examination.

This happens rarely. Points to note based on Registrar of Trade Marks / Commissioner of Patents practice are:

• The Registrar will consider issuing a summons to appear:
  • only if the cross-examination could be relevant to the proceedings.
  • only to someone who has provided a declaration.
  • only for that person to be cross-examined about that declaration (see reg 11.25) – not for the purpose of introducing substantially new evidence.
• If the Registrar does issue a summons, the party who requested it must:
  • make sure it is served promptly.
  • offer the person reasonable expenses to appear.
• If there is any objection to the summons, the relevant point is whether there is a lawful excuse for not complying with it (s 134(2)). The Registrar will not draw an adverse inference from the non-appearance of a witness without first being satisfied that they:
  • received the summons.
  • had a reasonable amount of time to arrange to attend the hearing.
  • received an enforceable offer (e.g. a non-refundable ticket) to pay reasonable expenses.

For an example of a contested summons to appear as a witness, see Airsense Technology Ltd v Vision Systems Ltd 62 IPR 409 and 62 IPR 413.

A declarant who attends a hearing might be called for cross-examination even if they have not received a written summons. (See Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1 (6 January 2005)).

Hearing and decision

The hearing is under the full control of the Registrar’s delegate (the hearing officer). Typically the applicant who initiated the s 52 matter will present their case first. The owner will then present their case and respond to the applicant’s case. Finally the applicant will have a short opportunity to reply to the owner’s case.

Both the applicant and the owner have to demonstrate their entitlement to register the design. (See George Stack v Davies Shephard Pty Ltd and GSA Industries (Aust) Pty Ltd [1996] APO 1; (1996) AIPC 91-241; 34 IPR 117, a patents case that also applies to designs).

If the hearing finds a mismatch between the people who were entitled to register the design and those who actually registered it, the s 52 case is proved.

The Registrar should issue a written decision within 3 months of the hearing, unless the parties are given an opportunity to file more material. As part of the decision, the Registrar may order one of the parties to pay costs for the hearing.

The decision can be appealed to the Federal Court (s 52(7)), generally within 21 days (see the Federal Court Rules for details).

Revocation

To revoke the design, the Registrar:

• usually makes a written declaration stating who was entitled to register the design at the time when it was registered.
• notifies the relevant people that the registration is revoked.
• amends the Register and publishes a notice stating that the registration has been revoked.

The Registrar does not automatically issue a written declaration about entitlement to register. For examples, see Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241; and Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8 at 28–31.

Registration by the correct owner after revocation

After an ownership dispute ends with the design being revoked under s 52, the correct owner can apply to register the design in their own name.

To do this, they follow the normal application process. They also need to:

• advise the Registrar at the time of filing the application (or, at the latest, before registration) that they are claiming entitlement under s 55 to the revoked design, so that they can keep the same priority date and term of that design.
• submit a request for registration along with the application to prevent it from lapsing, as the priority date will usually be more than 6 months before the filing date.

If they later apply to renew this registration, the time period for renewal will start from the filing date of the original (revoked) registration.