Designs and Models

– Designs Act 1953 (1953, No. 65) and the Designs Regulations 1954 (1954/224), both effective as from January 1, 1955.
– Designs Amendment Act 1972 (1972, No. 53), 1976 (1976, No. 86), 1996 (1996, No. 118) and 1999 (1999, No. 120).
– Designs Regulations 1954, Amendment No. 2, (1975/54), Amendment No. 10 (1987/228), Amendment 1999/155.
– Patents, Designs and Trade Marks Convention Order 2000 (2000/236).
– Designs Amendment Act 2010 (2010/15), Designs Amendment Regulations 2011 (2011/75).

Membership in International Conventions

– Paris Convention, London Act, and Articles 13 to 30 Stockholm Act, since June 20, 1984.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 20, 1984.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since November 22, 2001.

Filing

Applicant: any person claiming to be the proprietor (i.e. the author, or a person for whom the design was executed by the author for good consideration, or the assignee or personal representative of the original proprietor).

Foreigners and nationals not living in the country: receive equal treatment with resident nationals, but must furnish an address for service in New Zealand.

Kinds of designs and models: ornamental designs only; excluding methods or principles of construction or features of shape or configuration of an article which are dictated solely by the function of the article. New mechanical or purely functional designs (utility models) can be protected by a patent if they possess the characteristics of a patentable invention (see under Patents 3. Filing “Notion of the invention” above). Otherwise no protection for utility models is available under New Zealand legislation, which does not provide for the grant of “petty patents”, “innovation patents”, or “Gebrauchsmuster”.

Not registrable: works of sculpture, wall plaques and medals, printed matter primarily of a literary or artistic character; portraits of living persons or reproductions of armorial bearings, flags, etc., without consent of the person or authority concerned.

Novelty: designs must be new and original, and not the same as any design previously registered or published in New Zealand in respect of the same or any other article, or differing therefrom only in immaterial details or trade variants.

Priorities: Convention priority may be claimed for applications filed within six months after the first corresponding application in a Convention country, extendible by satisfying Commissioner on evidence of causes of delay.

Exceptions to protection: see above under headings “Kinds of designs and models”, “Not registrable” and “Novelty”.

Series applications: (1) a design common to a set of articles may be registered as a single design; (2) supplementary registrations, for the term of the original registration, may be obtained in respect of the application of a registered design to one or more other articles, or for minor modifications or variations of the registered design in respect of the same or one or more other articles.

Territory covered: as for patents (see under “Patents” above).

Filing requirements for an application (to be sent to an agent resident in New Zealand or Australia). The Intellectual Property Office of New Zealand will accept applications filed electronically through its online system. Documents should be sent in electronic form:
1. Signed authorization form;
2. Full details of applicant, etc.;
3. 1 set of representations (drawings or photographs);
4. Certified copy of basic application (if Convention case) with verified English translation thereof if basic application not in English;
5. A statement of novelty that outlines the novel features of the design, e.g. shape and configuration or pattern and ornament.

Minimum for informal filing: details of applicant and basic application; name of article the design is applied to; one set of representations; statement of novelty.

Examination

Amendment of applications: applications may be amended to meet official requirements, or to correct errors. See also under “Alterations” (below).

Examination: applications are examined as to formalities, and as to novelty and registrability of the design.

Alterations: any document, or drawings or other representation of a design, may be amended with leave of the Commissioner on such terms as they may direct.

Application kept secret: in the case of designs relevant to defense purposes, the Commissioner may give directions that applications be kept secret during the continuance in force of such directions. Designs for textile articles are kept secret for three years, and designs for wallpaper and lace for two years, following the date of registration thereof. Designs for other articles are kept secret until the day of issue of the certificate of registration. The applicant may request deferment of registration (and thereby deferment of publication) for a maximum period of fifteen months from the filing date of the New Zealand application.

Priorities: designs accorded Convention priority are registered as of the priority date.

Opposition: there is no provision for opposition to applications for registration of designs. After registration, application may be made to the Commissioner or to the High Court for cancellation of the registration.

Provisional registration: not provided for.

Registration: registration occurs automatically once the objections raised during examination (see above) against the design application are overcome. Registration gives the proprietor the exclusive right to work the design in New Zealand (this right being termed the “copyright in the design”). Registration is effected as of the date of application (or the priority date, in the case of a Convention application), but infringeable rights are acquired only in futuro on the actual date of issue of the certificate of registration.

Corrections: errors may be corrected on application, and may be subject to advertisement and opposition.

Publication: see above under “Application kept secret”. Bibliographic details (excluding the representations) of a pending design application are available on the IPONZ Internet site.

Protection

Delivery of document: in the absence of any official objection, the certificate of registration of a design will normally be issued within two months after filing, depending on the varying workload of the Patent Office.

Beginning of protection: designs are registered as of the date of application (or the priority date in the case of Convention applications). Infringeable rights are acquired in futuro on the date of issue of the certificate of registration.

Duration: designs are registered for an initial period of five years from the date of registration (i.e. the application or priority date).

Extension: copyright in the design may be extended for two further periods, each of five years, on payment of the prescribed extension fees on or before the 5th and 10th anniversaries of the date of registration. Six-month extension of time may be obtained for belated payment of the fees for extension of copyright in a design for its second and third five-year terms. Restoration of a design that has definitely lapsed at the end of its first or second term can be restored on proof that failure to pay the renewal fee was unintentional, and if the request for restoration is made within twelve months of the initial renewal deadline. The Commissioner may extend the period to request restoration, if the Commissioner is satisfied that the request for restoration is made without undue delay.

Marking of registered goods: there is no legal obligation to mark articles to which the design is applied. However, failure to mark articles in the prescribed manner may afford an infringer with a defense of innocent infringement, and prevent recovery of damages. The prescribed marking consists of the words “New Zealand” or the letters “N.Z.”, the word “Registered” or any abbreviation thereof, and the number of the design. The word “Registered” alone is not a sufficient marking.

Working: there is no legal requirement to work a registered design; any interested person may apply to the Commissioner for the grant of a compulsory license on the grounds that the design is not being worked to a reasonable extent in New Zealand. Little or no use is made of this provision. It is doubtful whether nominal working by means of advertisements would be legally effective in resisting an application for the grant of a compulsory license.

Changes in the list of goods: a design is registered in respect of an article (or a set of articles normally sold together). If the design is to be applied to a number of different articles not constituting a set, separate registrations are necessary in respect of each article. Such registrations are renewable (and will expire) concurrently with the earliest of them.

Assignment: design registrations may be assigned by deed. The assignee is required to register their title, but there is no penalty for failure to do so. Registration of assignments and licenses constitutes notice to the public and protects the interests of the assignee or licensee.

Licenses: licenses may be granted in respect of registered designs, by deed or by agreement. The licensee is required to register their interest under the license, but no penalty is provided for failure to do so.

Modification of Protection after Registration

Right of prior user: prior use of a design on an article in New Zealand renders possible the cancellation of the registration on the grounds that the design was not new or original. Prior recordal or application of a design by a government department (otherwise than by reason of information received from the registered proprietor) entitles the Crown to use the design for its services without payment to the registered proprietor.

Annulment of registration: at any time after registration, any interested person may apply to the Commissioner for cancellation of the registration on the grounds that the design lacked novelty or originality, or on any other grounds on which the Commissioner could have refused to register the design. Application may also be made to the High Court for cancellation of a design registration.

Compulsory licenses: see under “Working” (above).

Expropriation: enemy-owned design registrations may be expropriated in time of war. Otherwise expropriation is not possible; but the Crown may use registered designs for its services, on terms which may be determined on reference to the High Court, in the absence of agreement between the relevant government department and the registered proprietor. The Crown has extended powers regarding the use of registered designs during a period of emergency.

Validation: a design registration which has lapsed through non-payment of a renewal fee can be restored on proof that failure to pay the renewal fee was unintentional, and if the request for restoration is made within twelve months of the initial renewal deadline. The Commissioner may extend the period to request restoration, if the Commissioner is satisfied that the request for restoration is made without undue delay.

Infringements and penalties: infringement proceedings are by civil action inter partes in the High Court, for an injunction and damages or an account of profits. Penal sanctions are not incurred by infringement of a design registration. When unjustified threats of infringement proceedings are made, any aggrieved person may bring a civil action for a declaration that the threats are unjustifiable, and an injunction against continuance of the threats, and any damages sustained thereby.