Registered Designs in New Zealand
A registered design protects the appearance of an article, for example the shape of a new chair or pen. Designs are also available for new patterns or ornamentation. The owner of a registered design in New Zealand has the right to prevent others from using that design in New Zealand.
Registered designs complement other forms of intellectual property (IP), such as patents for inventions, copyright for artistic works, and trade marks for brands.
In New Zealand, it is only possible to obtain a registered design for a new design. It is crucial that there is no publication, sale or use of the product before a design application is filed.
New Zealand therefore differs from other jurisdictions, where there is a limited grace period. For example, the European Union and the United States have a 12-month and 6-month grace period respectively. In those jurisdictions, an applicant’s own activities during the grace period will not be taken into account for determining if the design is new.
Under Australian law, ownership of the right to apply for a registered design is complex. In some cases, both the party who commissions the work and the actual creator may be entitled to apply for a registered design.
Applying for a Registered Design
A design application is filed with a set of drawings showing the article in detail. This typically includes views of each side of the article with one or more isometric or perspective views.
It is possible to exclude some details from the design, for example by showing them in dashed lines. This means the design protection is not limited to designs with those details.
The design application is examined by a design examiner at the Intellectual Property Office of New Zealand. The design examiner considers whether the design is new and otherwise complies with the registration requirements. This process typically takes a few weeks.
Once any of the design examiner’s objections are overcome, the design is registered and published.
Registered Design Protection Outside New Zealand
To obtain design protection outside of New Zealand, design applications are then filed in each jurisdiction where protection is desired. Common jurisdictions include Australia, the United States, the European Union, China, and Japan.
In most jurisdictions, if these applications are filed within 6 months of the New Zealand filing, the applicant is entitled to retain the benefit of that filing date. This means the foreign applications are treated as if they were filed at the same time as the New Zealand application when considering if the designs are new.
Each foreign application will be examined at the national intellectual property office of each jurisdiction before a design is registered in that country. Some countries examine only for formal matters while others conduct a full examination process.
Maintaining a Registered Design
Designs in New Zealand last for 15 years from the date of filing. Renewal fees are due at 5 years and 10 years.
In other jurisdictions, the term of protection varies. For example, Australian registered designs last 10 years, and European Union registered designs last up to 25 years.
Once a design registration expires, or is allowed to lapse by not paying a renewal fee, others are free to make, use or sell the design.
Copyright and Unregistered Design Rights in New Zealand
In New Zealand, but not in many other jurisdictions, copyright may exist in design drawings and models. Copyright automatically comes into existence when a drawing is created and no registration is necessary.
If another party copies a substantial part of the design, they may infringe this copyright. However, if someone independently develops a product without copying, this will not infringe copyright in a similar product.
For industrial designs the term of copyright is usually limited to 16 years from the date of “industrial application”, which is the date when 50 articles have been made for sale or hire or, for products made in lengths, one length has been made for sale or hire. However, one exception is that it is generally not an infringement of copyright to copy directly from the drawings of a lapsed New Zealand patent or design.
Unlike registered designs, copyright does not automatically pass to the party who commissions the work. There typically must be another agreement in place to allow this to happen, such as an employment agreement or assignment.
Other countries generally do not provide copyright for industrial designs. Some countries have limited protection for unregistered design rights. For example, the European Union provides a 3-year term for unregistered design rights.
Want to Know More?
Ellis Terry are experts in New Zealand registered designs. Please contact us if you have any questions or would like to pursue a registered design in New Zealand.