Creators of designs ranging from consumer products and industrial structures to toys and myriad other products can obtain exclusive rights in them under the Designs Act. The rights are in the aesthetic features of the design so long as they are not dictated solely by the function of the article.
A design registration gives the owner the exclusive right to make, to import for sale or for use, or to sell, hire, or offer for sale or hire, any article in respect of which the design is registered. It also extends to anything for enabling any such article to be made, such as a mould. The exclusive rights run for 15 years from the date that the grant is made, so long as renewal fees are paid by the fifth, and tenth anniversaries of the date of grant.
To be eligible for registration, the design must be applied to an article by an industrial process. The design must be new and original as compared to any other article to which a design has been applied that has been registered or published in New Zealand. Earlier publication can be through the Internet.
Articles that are primarily literary or artistic in nature are excluded. Specifically excluded are: sculptures, wall plaques, medals, book-jackets, calendars, certificates, coupons, dressmaking patterns, greetings cards, leaflets, maps, plans, postcards, stamps, trade advertisements, trade forms, and cards, transfers, and the like.
Applications for registration must include one or more drawings of the article representing different views of the article. If the design is applied to a set of articles, for example, a dining set or a dinnerware set, then drawings of each article in the set are required. In addition, the application must include the name of the article and a statement identifying the novel features of the design. Design applications examined for novelty by examiners at the Intellectual Property Office (IPONZ) and are usually processed to grant within six months of filing.
In addition to registration, it is also possible to have an unregistered design right under the New Zealand Copyright Act. The owner of copyright in a drawing of an object has an exclusive right to prevent others from making objects copied from that drawing. The term of such copyright is 16 years from when the fiftieth object has been made by or authorised by the owner.
There is no registration system for copyright works in New Zealand, so copyright comes into existence when a drawing is made. While this may appear to be a free lunch, lots of terms and conditions apply. To stop a copier the copyright owner must prove that an original work exists, that they are the owners of the work, that the alleged infringing article sufficiently resembles the work, and that the alleged infringer copied the original work.
To provide the basis for asserting copyright in any drawing to support a copyright claim later, each drawing should be dated and marked “Copyright” or “©” with the name of the owner and stored safely. Products made from the drawings should also be marked. If the owner wishes to stop an infringer the original drawings are the evidence of the “work”, when they were created and who is the owner.
To enforce a registered design, the owner only has to satisfy the court that the alleged infringing article sufficiently resembles the article of the registered design. To enforce copyright, the owner of a copyright work also has to show that the copyright work exists, that they are the owner, and that the work was copied. The term of copyright in industrial articles ends 16 years after the making of 50 articles without the payment of renewal fees. If an object has been published before a design application has been filed, then copyright protection is the only option.
Before launching a newly-designed product it is prudent to conduct a search of the Designs Register available on the IPONZ website to ensure that you are not infringing a registered design. We can do a search for you and give an opinion about whether or not your design would be an infringement.
To avoid copyright infringement the advice is simple. Don’t copy. Independent design is a defence to any accusation of copyright infringement. To prove independent design, a paper trail of the evolution of the design, from conception to final product, is vital evidence. Of course, the “paper” trail can be digital as long as it has been accurately dated.
Designs applied to products can also be registered in Australia. Eligibility requirements and exclusive rights provided are similar to those in New Zealand. However, the term of protection is limited to 10 years if the registration is renewed after five years. The registration process is more complicated in Australia as well. There is limited protection for industrial designs under the copyright Act in Australia. If more than 50 objects incorporating the design have been sold, copyright protection ceases to exist.
A design means the overall appearance of a product resulting from the one or more visual features of the product. A design must be new and distinctive when compared to any other design used publicly in Australia, or published anywhere before the filing date of an application.
The exclusive rights under a registered design in Australia are: to make or offer to make a registered design product; to import such a product for sale or commercial use; to sell, hire or dispose of such a product, or offer to do so; to use such a product commercially; to keep such a product for any such purpose; and, to authorise another person to do any of the above.
Obtaining an enforceable design registration is a three -stage process: application, registration, and certification. Applicants can request registration at the same time that the application is filed or delay requesting registration for up to six months, after which it becomes automatic. The registration examination process is restricted to formalities. At that stage the application is published. To make a design enforceable last stage is to request certification or examination to determine that the design is registrable. The 10 year term begins at the application stage, but the design may only be infringed from the date it is registered and infringement actions may only be taken after certification. A single application may be made for two or more designs, provided the product are of the same type.
The filing date of an equivalent New Zealand design application can serve as a filing date in Australia so long as the Australian filing is made within six months of the New Zealand one.
McCabes can assist you in in securing Design Rights in any country, advise on potential challenges to third party Design applications, pursue infringement proceedings, and assist in licensing and assignment of Designs.
Peter Dengate Thrush
McCabes are experts in all aspects of Australian and New Zealand IP rights, protection and law. We act for clients in NZ, Australia and internationally.
For advice on securing, protecting and defending your IP assets, please contact us today.