Can someone use a design that I have registered?
Updated: Sep 16, 2021
If you have registered a design, you will not be able to enforce that registration against a third party if you or the third party used the design before the filing date of your registration. In that instance, your design registration would be invalid. If you sue for infringement in these circumstances, you will be ordered to pay for your opponent's legal costs.
This was demonstrated in the case of Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd  FCA 228).
Rosemin was the registered owner of Australian Design Registrations for six dresses, and claimed that dresses sold by Gasp infringed the Rosemin Designs pursuant to section 71 of the Designs Act 2003.
Both Rosemin and Gasp sold party dresses for girls aged 16 to 25 years.
Gasp admitted that it infringed the registrations, but argued that the registrations were invalid.
Gasp claimed that it sold the dresses according to the designs before the filing date of the registrations.
Gasp relied on the evidence of its employees and director as well as s purchase orders, shipment receipts, tax invoices, sales contracts, sales reports, and photos from a shoot that was alleged to have occurred before the filing date of the registrations.
Justice Middleton said that on the evidence he could not be satisfied that Rosemin even created the designs.
Justice Middleton found that Gasp had proven on the balance of probabilities that it was selling the dresses before the priority date of Rosemin's registrations.
Accordingly, he dismissed Rosemin's application and made orders revoking the registrations of the Rosemin designs.
Further Justice Middleton found that even if Rosemin had shown that its registered designs had been infringed, Justice Middleton would not have awarded it damages for lost sales or damage to reputation. Rosemin sold 81% of its dresses, but could not show the Gasp made any impact on its sales. Justice Middleton thought that Rosemin's claim that Gasp's led to the entire downturn in its business and the closure of one of its stores was exaggerated.
Rosemin was ordered to pay Gasp Jeans costs of the court proceedings.