Anyone with an active role or interest in a design right proceeding can dispute a decision that impacts them.
The main types of disputes we deal with relate to:
You can dispute a decision we make during the formalities assessment if you are the applicant or represent the applicant.
There are three ways examination can happen:
- The owner can request examination of their own design right.
- A third party can request examination of someone else's design right.
- We can initiate examination or be ordered to do so by a court.
Anyone can dispute a decision we make during the examination process.
The most common dispute is whether the design was new and distinctive compared to other designs that existed before its priority date.
Examination requests from a third party
If a third party believes a registered design is not valid, they can request for us to examine it. Examination of a design can occur even if we have examined it in the past.
In this case, the third party will need to pay half the examination fee and the owner will need to pay the balance. If the owner does not pay the balance, the design registration will cease.
Before examination has ended, the third party or the owner of the design right may dispute the proposed examination decision by asking to be heard.
Anyone can dispute who is the rightful owner of a design or if the person who applied for the design was entitled to do so. If we receive a dispute request, we will give the design right owner the opportunity to participate or not. If the owner chooses not to participate, the dispute will continue without them.
Opposing an extension of time
We will advertise proposed extensions of time in the Australian Official Journal of Designs if they are 3 months or longer. This gives other people an opportunity to oppose the extension. Learn more about extensions of time.
Opposing an amendment
We will advertise certain types of proposed amendments in the Australian Official Journal of Designs. Generally, these amendments materially alter the meaning or scope of a registered design. This gives other people an opportunity to oppose the amendment request.
The dispute process
Below is a general overview of the dispute process. It may change depending on your specific circumstances.
- To begin the dispute process, the owner or a third party will need to submit a formal request and pay any associated fees. If one party requests to be heard and the other would like to participate in the hearing, the participating party must pay an attendance fee.
- The relevant parties have an opportunity to file evidence and submissions.
- We will set a hearing date depending on the availability of hearing officers. We will notify all parties of this date, as well as the next steps.
- The hearing occurs on the set date.
- We consider the evidence and submissions and make a decision. We will notify all parties of this decision. We usually make a decision within 3 months of the hearing date.
In our decision we may award costs against any party to proceedings. An award of costs is enforceable as a debt. If legal representation is used, an award of costs could be thousands of dollars.
Either party can withdraw from proceedings at any time before we issue our decision. Even if a party withdraws, in some circumstances it is possible to seek and obtain an award of costs.
Either party may appeal, or in some instances seek a review of, a hearing decision. In either case, when issuing our decision we will inform each party of their right to appeal or seek review.
For most matters, the party will need to file a notice of appeal in the Federal Court or the Federal Circuit Court. This appeal must be made within 21 days of the decision. For more information on appeals, contact the relevant court registry.
For some matters, the party can make an application for review of the decision to the Administrative Appeals Tribunal (‘AAT’). This application must be made within 28 days of the decision. For more information on reviews, contact the AAT directly.
Where neither of those options are available, it may be possible to seek judicial review of the decision. For more information on applying for judicial review, seek independent legal advice and/or contact the relevant court registry.
Seek professional advice
The dispute process can be lengthy, complex and costly. If you are considering requesting or defending a hearing, it may be worth speaking with an IP professional.
If you have general questions about the hearings and oppositions process, you can contact us.