Authors: Julie Ballance and Matthew O'Neill

Registered Designs

New Zealand legislation provides a route by which original industrial designs can be protected for a period of up to 15 years. Design registration is available for features of shape, configuration, pattern, or ornamentation applied to an article by an industrial process. These features must appeal to and be judged solely by the eye and not merely be features dictated only by the function that the article is to perform. Examples of registrable designs include a novel shape for a perfume or beverage bottle, novel ornamentation on the handles of cutlery, and perhaps a novel shape for a food packaging container.

No disclosure prior to filing

Before filing a design application it is essential not to publicly display or offer for sale the item to which the novel design has been applied.

Design searches prior to filing

A search of the Intellectual Property Office of New Zealand records is recommended in order to identify existing registered designs which may be infringed by the marketing of the article for which registration is sought. Such a search is also useful to identify any registrations that may become obstacles to the grant of your design registration. You may need to obtain professional advice as to whether your proposed registration is likely to succeed in light of any similar designs uncovered by the search.

Filing an application

Filing requirements for registered designs are reasonably simple. In order to apply for a registered design the applicant must file:

- Authorisation, including name, address and nationality of applicant(s);
- Statement of novelty, which can be prepared by an intellectual property professional; and
- Representations- five copies of the main views of the object.

The representations must show all the features of the design for which protection is sought and usually consist of front elevation, side elevations, plan, and one or more perspective views.

Obtaining design registration

Once the design application has been filed at the Intellectual Property Office of New Zealand, the applicant can initiate marketing activities without fear of invalidating the registration. The completed application will proceed automatically to examination, and, provided the examiner raises no objections, the Certificate of Registration should issue shortly thereafter.

The Intellectual Property Office of New Zealand will provide the applicant with a design registration number. We recommend that this number be visible on all products for which manufacturers have New Zealand Design Registration. The reasons for this are twofold:

- Deterring competitors from producing similar, possible infringing, designs,
- Allowing the recovery of damages if infringers are successfully prosecuted.

Life of a registered design

New Zealand Design Registrations last for 15 years, provided 5-yearly renewal fees are paid.

Copyright and designs

Copyright protects against copying the actual form of an existing design in which copyright exists. It does not offer protection against independent creation of an identical design. Nor does it protect against the copying of the principle of the design, if a different form of the design results. For the former reason, a New Zealand design registration for your design is very worthwhile in that this provides a monopoly in that design and therefore does not require any evidence of copying to be established in any infringement action.

We strongly recommend that design registration be obtained in all countries (or regions) that an applicant is intending to market products to which the design is applied. This is a very important consideration in some countries, for example, Australia where there is no copyright protection available for industrialised three-dimensional designs.

To obtain further information on the requirements and procedures for filing a New Zealand Registered Design, contact an Intellectual Property Professional.

This is a general summary only and should not be taken as a substitute for specific advice.

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