The validity of an Australian registered design is not assessed as part of the registration process. Rather, validity is assessed during examination as part of the certification process, which must be passed for infringement of the registered design can be asserted in correspondence or proceedings.
Examination can be requested either by the owner of the registered design or by any third party. If the examiner identifies any prior art or other reason why the design is either not novel or not distinctive, an examination report will issue and the owner will have an opportunity to respond.
It is possible to request examination multiple times, such as in light of new prior art. In this way, third parties can effectively challenge registered designs through Designs Office processes.
Third parties can also challenge administrative decisions such as extensions of time.
Design infringement proceedings occur in the Federal Circuit Court or the Federal Court. The validity of Australian registered designs can be challenged through claims for revocation (commenced proactively or as a cross-claim in an infringement suit) or in appeals from Designs Office decisions.
Shelston’s lawyers and patent attorneys are experienced in handling and responding to all of these types of registered design proceedings.
We have great depth and experience in revocations, litigation and disputes including:
- Acting for owners of registered designs in disputes with infringers.
- Advising and conducting design enforcement programs for major international manufacturers of consumer products.
- Acting for clients in defending allegations of registered design infringement and challenging validity.