By Julie Ballance,
This article was also published in Trademark April/May 2002 and is reproduced on the Findlaw Web site courtesy of Trade New Zealand.
Well known examples of designs currently registered in New Zealand include various Bodum® coffee pots manufactured by BSW client PI-Design AG of Switzerland and consoles for Playstation®, registered by BSW client Sony.
A new or original design may be registered under the Designs Act 1953. A registration under the Act provides the owner with an exclusive right to make, import, sell and/or hire out articles featuring the design and therefore to prevent others from doing the same.
Some criteria must be met for valid a design registration to be obtained. These include:
the design must be applied to an article - this means that the registration must be for a specific article of manufacture, such as a perfume bottle or chair, rather than for a concept or design feature that could be applied to a number of different articles. the design must be new - this means that there must be no non-confidential disclosure of the design prior to filing the design application; as I discuss below however, this rule does not apply in some countries. the design must comprise features of shape, configuration, pattern or ornament and therefore cannot be a method or principle of construction, such as a particular weaving technique. the design must be applied to the article by an industrial process or means - this merely means that it must be possible to reproduce the design upon articles en masse. However, this does not exclude handcrafted articles, hand-painting and the like; and the design must appeal to the eye - design registrations are limited to the protection of aesthetic as opposed to functional designs, although artistic merit as such is not required.A design application must include representations such as photographs or drawings that show the article and all features of the design. This usually means the article featuring the design is shown from all perspectives, even underneath as required.
A design registration in New Zealand has a life of 15 years, although government fees are payable after 5 and 10 years, if the design is to stay in force.
The costs of obtaining a design registration in New Zealand is usually much less than for obtaining patent protection, typically less than $1,000, while the cost of obtaining patent protection could reach $5,000. The registration process is also relatively straightforward, and often completed within a few weeks of filing.
OVERLAP WITH COPYRIGHTIn New Zealand, designs registrable under the Designs Act 1953 will usually also enjoy copyright protection under the Copyright Act 1994. However, there is one important difference between the protection provided by these two pieces of legislation. This difference becomes particularly significant when enforcement of rights becomes necessary, for example, when a competitor's product that is similar to your own appears on the market.
To successfully exclude the infringing product from the market, the design registration owner must show the infringing product is not substantially different from the registered design (although of course litigation is never so simple and the design registration owner will need to prove other points to succeed!). This means that infringement of the design registration can occur even when the designer of the infringing product has created his or her own design entirely independently.
On the other hand, an essential ingredient in any infringement under the Copyright Act 1994, is that copying must have occurred. This can be difficult to prove, as the copyright owner must be able to show that the infringer had access to the copyright work and has reproduced a substantial part it.
DESIGN PROTECTION OVERSEASThe Designs Act 1953 is less often used than other intellectual property legislation in New Zealand (the number of design applications filed in the 2001-2002 was around 900, compared with around 6,500 patent applications and 25,500 trade mark applications). However, design registration protection can provide quick and cost effective protection for some innovations.
DESIGN REGISTRATION PROTECTION IN OTHER COUNTRIESIf your business is one in which design registration could, or already does, play an important role in maintaining a competitive advantage, you should be aware that the relevant laws vary widely in other countries.
A number of countries provide a grace period, enabling the owner of the design to publicly disclose it prior to filing an application for registration. This is quite different from New Zealand and means that where a design may have been inadvertently disclosed here - invalidating design registration in New Zealand, it may still be possible to obtain design registration protection in other countries. The United States and the United Kingdom provide a 12-month grace period for example.
Another significant area of difference is found in the overlap between copyright protection. New Zealand is one of the few countries continuing to provide automatic copyright protection for three-dimensional designs. In most countries, a design registration is required for protection of a three-dimensional design, although the UK does provide for an "unregistered design right".
CONCLUSIONThe law protecting innovative designs can be a minefield and we do strongly recommend that you take advice from your IP advisor prior to discussing any innovative design for articles of manufacture with third parties.
The Designs Act 1953 is less often used than other intellectual property legislation in New Zealand - the number of design applications filed in 2001-2002 was around 900, compared with around 6,500 patent applications and 25,500 trade mark applications.
However, design registration protection can provide quick and cost-effective protection for some innovations
This is a general summary only and should not be taken as a substitute for specific advice.
Baldwin Shelston Waters
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Baldwin Shelston Waters