Know-how series: Design Registration—am I a designer?

Tuesday, October 18, 2022

Design registrations are ‘lesser known’ intellectual property (IP) rights compared to some of the others, but they are incredibly valuable and can be worthwhile obtaining if you meet the requirements under the New Zealand Designs Act 1953 ('the Act').

This article explores the purpose and process for obtaining a design registration in New Zealand. If you’ve designed something that you think is amazing and unique, you may need to apply for a design registration to prevent others from taking your idea. 

Let’s take a step back: Intellectual Property (IP) is an umbrella term for a range of legal rights such as:

  • Trade Marks: the brands that you see to identify your favourite or preferred product or service provider  
  • Patents: the invention which makes your life easier
  • Copyright: your favourite book, song or movies
  • Geographic indicators: the places where your wine and cheese originate from
  • Designs: how something looks, but not the way it works.

What is a design registration?

A design registration protects the way an article looks; the visual features of an article such as the shape, configuration, ornamentation, or pattern.

A design registration must be applied to an article that has aesthetic appeal and which is to be sold in quantity or mass produced (more than 50). It does not include the “one-off” hand-made articles, or articles where the shape is determined solely by the function of the article – there has to be some new and distinctive feature which is applied of the article which has eye-appeal and be capable of being made by an industrial process.

A well-known example of a design capable of registration is the shape of the Coca Cola bottle:

 

A picture containing text, bottle, vessel

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Coca Cola was able to obtain a design registration for the shape of its glass bottle, to prevent competitors from recreating the same or a similar shaped bottle.

Other examples of designs that could be registered include the physical appearance of mobile phones, furniture, jewellery, bags, or clothing.

Why file for a design? 

Applying for a design registration is worthwhile because it provides you with a clearly defined, licensable and enforceable right in your new and distinctive design.

Secrecy is important 

It is important that you do not show, sell, or advertise your design to another party before applying for a design registration. Sharing your idea before obtaining a registration, could invalidate your application/registration.

There are some exceptions available under the Act, but best practice is to not tell people (or make sure you’re covered by a Non-Disclosure Agreement (‘NDA’) until you’ve obtained a registration!

What should I do if I want to use or register a design? 

In New Zealand, there is a register of all design registrations on the Intellectual Property Office of New Zealand website

Before applying for (or committing to) a design, it is worthwhile engaging an IP expert to search the register to make sure that another party has not filed for the same or similar design.

This helps mitigate any infringement risks, and could save you from investing too much into a design you can’t use.

Design rights are jurisdictional, so if you plan to use your design outside of New Zealand, it is important to conduct additional searches and seek advice on registration in other countries you plan to use your design.

Under the Act, there is also a requirement that New Zealand residents obtain permission from the Commissioner. if they wish to file overseas without filing in New Zealand first (there are some exceptions to this), but best practice is to file in New Zealand first, and then look to file applications overseas.

Depending on the overseas country of interest, and subject to the overseas design application being filed within six-month of filing your New Zealand application, we can claim the same filing date as the New Zealand application. This means that if another party tries to file after your local application in an overseas country, then your application will take priority.

To apply for a design registration in New Zealand, you need to have:

  • good quality representations of the design, for instance drawings or pictures, that depict various views of the design;
  • a description of the article to which the design is applied (e.g. ‘toy’ or ‘bag’);
  • a brief statement outlining what is novel about the design.

A registered design will last 15 years from the filing date in New Zealand, but renewal fees are due at the 5th (and in New Zealand on the 10th) year post registration. Design registrations will last a maximum of 10 years in Australia (to obtain the maximum period, payment is required at the 5th year),

What now?

If you think you have got the next best (novel and distinctive) design idea, get in touch! Seeking advice from legal experts can best help you protect your idea, ensure you aren’t infringing another’s rights, and can save you costs in the long run.

We can help you:

  • ensure your designs are kept secret with appropriate NDAs;
  • check designs registers to make sure no one else has registered the same or similar design;
  • prepare and file a design application in New Zealand, and see it through to registration;
  • file design applications overseas;
  • license your designs to others; and
  • prevent unauthorised use of your designs.

Special thank you to Partner Scott Moran and Senior Solicitor Rahera Dyall-Kalidas for preparing this article. For more information about applying for a design registration, please contact a member of our Intellectual Property team.

 

Disclaimer: the content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.

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