How do I protect my design in New Zealand and Australia?
Updated: Aug 31, 2021
You can protect your design by officially registering it. An application, accompanied by a Statement of Novelty and representations of the design, must be filed at the Designs Office. We can prepare and file the documents for you.
In New Zealand, a registered design will last for 15 years. Renewal fees are due on the fifth and tenth anniversaries of the registration.
In Australia, a registered design in Australia has a maximum term of 10 years and must be renewed on the 5th anniversary.
The owner of a registered design has the exclusive right to sell, hire (or offer for sale or hire), manufacture and import any article that embodies the design. The design registration is infringed by anyone who does any of those things without the consent of the owner of the registered design.
For a product to infringe a registered design, it must embody a design which is the same or not substantially different to that registered. When assessing similarity, if the registered design is quite unique, then large design differences may be necessary to avoid infringement, and vice versa.
If a Court finds that a product infringes a registered design, then it can grant an injunction to prevent further use or sale of the infringing product, and it can order that all infringing products, and possibly the machinery used to produce those products, are delivered up to you. A Court can also order that the infringer pay you any profits earned from the sale or hire of infringing products, or compensate you for the losses you have suffered as a consequence of the infringement.
In both countries, the shape and configuration of the product can be protected, or its pattern and ornamentation.
In New Zealand, designs are required to be new and original. "New" means that the same design has not been applied to a manufactured article in New Zealand before the application to register the design is filed. Under NZ copyright law “original” means not copied from anything else - that is, the product was made from the author’s time, labour, skill and judgment.
In New Zealand, the design must have some element of eye appeal. Designs which are purely functional cannot be protected. Works of sculpture, wall plaques medals, printed matter used primarily for literary or artistic purposes (e.g. greeting cards or playing cards). However, if a functional objection is raised during patent office examination, it is usually easily overcome. Most products serve a function but the product designer usually has the freedom to show how the product shape implements the function. The shape is typically held not to be purely functional if other shapes can achieve the same function.
In Australia, designs can be functional and must be new and distinctive. "New" means different to prior art designs and “distinctive” means not substantially similar in overall impression (a higher threshold than originality).
There are "grace" provisions for publication of the design in Australia and New Zealand, but those provisions do not apply in other important countries, namely China.
In New Zealand, only prior publications and prior use of any product in New Zealand can be taken into account to determine originality, but publications on the internet are taken to be publications in New Zealand (except for publications of the design on foreign IP registers). Prior to filing a design application in New Zealand a product embodying the design cannot be sold or offered for sale, disclosed (other than in confidence), or published in New Zealand.
In Australia, prior publications from anywhere in the world and prior use only in Australia is taken into account.
In New Zealand, more than one product may be the subject of a single design application in certain circumstances. For example, articles such as a knife, fork and spoon set with a common shaped handle would qualify as a set of articles.
In Australia, each additional design is charged the same fee as a new application. So there is no point in combining multiple designs into the same application.
In New Zealand, a substantive prior art search is conducted once the application has been filed. If objections are raised, the applicant has 1 year from the application date to rectify the application in New Zealand. It is possible to request a delay of registration in New Zealand for up to 1 year from filing the design application. This may prevent premature publication of a product. If no delay is requested then New Zealand registration typically takes 1 to 3 months from filing if no objections are raised by the Examiner.
In Australia, only a formalities examination occurs in Australia prior to registration. However, the applicant can enforce their design rights, then registration it must undergo a substantive examination and be certified by an Examiner. In Australia, it is possible to delay registration for 6 months by not filing a request for registration at filing. If registration is requested at filing the registration typically takes 3 to 5 months from filing.
In New Zealand and Australia, the allegedly infringing product must be the same as the title of the registered design. The registration of the design does not protect the owner against the same design being used on other products. For example, if the article of the registered design is defined as “a baseball bat shaped controller for a virtual reality gaming system”, a product that has the same shape but that is a wooden baseball bat will not be an infringement. Therefore, careful selection of the title of the registered design is important.
In Australia, the offending product must be identical to, or substantially similar in overall impression of the registered design. Section 19(1) of the Australian Designs Act 2003 (Cth) states that the court may pay more attention to the similarities rather than the differences. The court must also have regard for prior art base and, if only part of the design is similar, contextualise this part in relation to the whole design.
In Australia, The Copyright Act 1968 (Cth) does not extend copyright protection for mass produced 3D products (i.e. products which have been sold more than 50 times). Automatic copyright protection only applies for the first 50 articles of a 3D products which are produced.
In New Zealand, the Copyright Act 1994 (NZ) provides 16 years of automatic copyright protection for 3D products. The 16-year term runs from the date on which the first 50 products have been produced. If a registered design for a product has lapsed, the copyright in the product will also lapse. There are no restoration provisions for New Zealand registered designs.
In New Zealand and Australia, the first owner of a registered design is usually the designer(s). However, if the design was created in the course of employment, the rightful owner will be the employer unless the employment contract provides otherwise. A contractor will own the design rights and copyright unless a contract specifies otherwise.
In any event, it is best to have a deed of assignment signed by all parties concerned prior to filing a design application. This assignment deed should also include an assignment of copyright and moral rights, as well as the design rights.
Separate applications must be filed in each country where you want to protect the design. If an application is made overseas within six months of filing the corresponding design application in New Zealand or Australia, it can be back dated so that it will have the same priority date as the New Zealand or Australian application.
Registered designs can be assigned or licensed to third parties who want to use the design.
Any interested person may apply to the Intellectual Property Office or the Court for cancellation of a registered design on a number of grounds. The most common ground is that the design was not new or original at the date of filing.
A registered design is a registered proprietary right which records what the design is, the date of the design and the owner. The details of a registered design are published and searchable and will act as a deterrent to potential infringers.
There is no system of registering copyright, so there is little deterrent for infringing copyright. To prove copyright infringement in an unregistered design, you have to prove that you have a ‘copyright work’ in which copyright exists, that you (rather than the designer) own the copyright, and that the infringer actually copied your product. These things, particularly actual copying, can be difficult to prove. By comparison, if you have a registered design, all you need show is that the look of the infringing product does not differ substantially from your registered design. It does not matter whether the alleged infringer copied or not.
If you have any further questions or you would like to register your design in New Zealand, Australia or anywhere else in the world, please call Steve Davey on +61402519010.