This Act shall come into force on a day to be appointed for the commencement thereof by the Governor-General by Proclamation.
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Interpretation
(1)
In this Act, unless the context otherwise requires,—
Article means any article of manufacture; and includes any part of an article if that part is made and sold separately
Assignee includes the personal representative of a deceased assignee; and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person
Commissioner means the Commissioner of Designs
Commonwealth means the British Commonwealth of Nations; and includes every territory for whose international relations the Government of any country of the Commonwealth is responsible
Convention country, in any provision of this Act, means an entity for the time being declared by an order under section 20 to be a convention country for the purposes of that provision
Convention country: this definition was substituted, as from 14 October 1999, by section 2(2) Designs Amendment Act 1999 (1999 No 120).
Copyright has the meaning assigned to it by subsection (1) of section 11 of this Act
Court means the High Court
Court: the words “High Court” were substituted for the words “Supreme Court”, as from 1 April 1980, pursuant to section 12 Judicature Amendment Act 1979 (1979 No 124).
Design means features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye; but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform
Government Department means any Department or instrument of the Executive Government of New Zealand
Journal means the Patent Office Journal published under subsection (1) of section 112 of the Patents Act 1953
Prescribed means prescribed by regulations made under this Act
Proprietor has the meaning assigned to it by section 6 of this Act
Registered proprietor means the person or persons for the time being entered in the register of designs as proprietor of the design
Set of articles means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.
(2)
Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set.
(3)
Any question arising under this Act as to whether a number of articles constitute a set of articles shall be determined by the Commissioner; and notwithstanding anything in this Act any determination of the Commissioner under this subsection shall be final.
(4)
For the purposes of subsection (1) of section 21 and of section 23 of this Act, the expression personal representative, in relation to a deceased person, includes the legal representative of the deceased appointed in any country outside New Zealand.
(5)
In the case of an entity that is a convention country but is not a state, part of a state, or a territory for whose international relations a state is responsible,—
(a)
A reference in this Act to—
(i)
Application for protection in a country; or
(ii)
Application for protection in respect of a country,—
must be read as a reference to application for protection under the rules of the entity:
(b)
A reference in this Act to the law of a convention country must be read as a reference to the rules of the entity:
(c)
A reference in this Act to the Government of a convention country must be read as a reference to the governing body of the entity.
Compare: Registered Designs Act 1949, s 44 (UK); 1921-22 No 18 s 2
Subsection (5) was inserted, as from 14 October 1999, by section 2(3) Designs Amendment Act 1999 (1999 No 120).
There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Designs.
(2)
The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed as Commissioner of Designs under this Act.
Compare: 1921-22 No 18 s 113
Section 3 was amended, as from 1 January 1963, by section 77(1) State Services Act 1962 (1962 No 132) by substituting the expression “State Services Act 1962” for the expression “Public Service Act 1912”.
The expression “State Sector Act 1988” was substituted for the expression “State Services Act 1962”, as from 1 April 1988, pursuant to section 88(2) State Sector Act 1988 (1988 No 20).
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Assistant Commissioners of Designs and other officers
(1)
There may from time to time be appointed under the State Sector Act 1988—
(a)
One or more fit persons to be Assistant Commissioners of Designs:
(b)
Such other officers and employees as may be necessary for carrying out the purposes of this Act.
(2)
Every Assistant Commissioner of Designs so appointed, while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and every reference in this or any other Act to the Commissioner shall, so far as may be necessary for the purpose of giving effect to the provisions of this section, be deemed to include a reference to every Assistant Commissioner of Designs.
(3)
The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed an Assistant Commissioner of Designs under this Act.
Compare: 1921-22 No 18 ss 114, 115
Section 4 was amended, as from 1 January 1963, by section 77(1) State Services Act 1962 (1962 No 132) by substituting the expression “State Services Act 1962” for the expression “Public Service Act 1912”.
The expression “State Sector Act 1988” was substituted for the expression “State Services Act 1962”, as from 1 April 1988, pursuant to section 88(2) State Sector Act 1988 (1988 No 20).
Registrable designs and proceedings for registration
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Designs registrable under Act
(1)
Subject to the following provisions of this section, a design may, upon application made by the person claiming to be the proprietor, be registered under this Act in respect of any article or set of articles specified in the application.
(2)
Subject to the provisions of this Act, a design shall not be registered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in New Zealand in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.
(3)
Regulations made under this Act may provide for excluding from registration under this Act designs for such articles, being articles which are primarily literary or artistic in character, as may be specified in the regulations.
Compare: Registered Designs Act 1949, s 1 (UK); 1921-22 No 18 ss 2, 52
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Proprietorship of designs
(1)
Subject to the provisions of this section, the author of a design shall be treated for the purposes of this Act as the proprietor of the design:
Provided that where the design is executed by the author for another person for good consideration, that other person shall be treated for the purposes of this Act as the proprietor.
(2)
Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission, or operation of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, that other person, or, as the case may be, the original proprietor and that other person, shall be treated for the purposes of this Act as the proprietor of the design or as the proprietor of the design in relation to that article.
Compare: Registered Designs Act 1949, s 2 (UK); 1921-22 No 18 s 52(1)
An application for the registration of a design shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2)
For the purpose of deciding whether a design is new or original the Commissioner may make such searches, if any, as he thinks fit.
(3)
The Commissioner may refuse any application for the registration of a design or may register the design in pursuance of the application without modification or subject to such modifications as he thinks fit.
(4)
An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed shall be deemed to be abandoned.
(5)
Except as otherwise expressly provided by this Act, a design when registered shall be registered as of the date on which the application for registration was made, or such other date (whether earlier or later than that date) as the Commissioner may in any particular case direct:
Provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certificate of registration of the design under this Act is issued.
(6)
An appeal to the Court shall lie from any decision of the Commissioner under subsection (3) of this section.
Compare: Registered Designs Act 1949, s 3 (UK); 1921-22 No 18 s 52
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Registration of same design in respect of other articles, etc
(1)
Where the registered proprietor of a design registered in respect of any article makes an application—
(a)
For registration, in respect of one or more other articles, of the registered design; or
(b)
For registration, in respect of the same or one or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,—
the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design:
Provided that the period of copyright in a design registered by virtue of this section shall not extend beyond the expiration of the original and any extended period of copyright in the original registered design.
(2)
Where any person makes an application for the registration of a design in respect of any article and either—
(a)
That design has been previously registered by another person in respect of some other article; or
(b)
The design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,—
then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.
Compare: Registered Designs Act 1949, s 4 (UK); 1921-22 No 18 s 53; 1939 No 26 s 69
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Provisions for ensuring secrecy in respect of designs relevant for defence purposes
(1)
Where, either before or after the commencement of this Act, an application for the registration of a design has been made, and it appears to the Commissioner that the design is one of a class notified to him by the Minister of Defence as relevant for defence purposes, or is in the opinion of the Commissioner likely to be valuable for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the design, or the communication of such information to any person or class of persons specified in the directions.
(2)
Regulations may be made under this Act for securing that the representation or specimen of a design in the case of which directions are given under this section shall not be open to inspection at the Patent Office during the continuance in force of the directions.
(3)
Where the Commissioner gives any such directions as aforesaid, he shall give notice of the application and of the directions to the Minister of Defence, and thereupon the following provisions shall have effect, that is to say:
(a)
The Minister of Defence shall, upon receipt of the notice, consider whether the publication of the design would be prejudicial to the defence of New Zealand, and, unless a notice under paragraph (c) of this subsection has previously been given by the Minister of Defence to the Commissioner, shall reconsider that question before the expiration of 9 months from the date of filing of the application for registration of the design and at least once in every subsequent year:
(b)
For the purpose aforesaid, the Minister of Defence may, at any time after the design has been registered or, with the consent of the applicant, at any time before the design has been registered, inspect the representation or specimen of the design filed in pursuance of the application:
(c)
If upon consideration of the design at any time it appears to the Minister of Defence that the publication of the design would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence shall give notice to the Commissioner to that effect:
(d)
On the receipt of any such notice the Commissioner shall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application or registration, whether or not that time has previously expired.
(4)
No person resident in New Zealand shall, except under the authority of a written permit granted by or on behalf of the Commissioner, make or cause to be made any application outside New Zealand for the registration of a design of any class prescribed for the purposes of this subsection unless—
(a)
An application for registration of the same or substantially the same design has been made in New Zealand not less than 6 weeks before the application outside New Zealand; and
(b)
Either no directions have been given under subsection (1) of this section in relation to the application in New Zealand or all such directions have been revoked:
Provided that this subsection shall not apply in relation to a design for which an application for protection has first been filed in a country outside New Zealand by a person resident outside New Zealand.
Compare: Registered Designs Act 1949, s 5 (UK)
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Provisions as to confidential disclosure, etc
(1)
An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of—
(a)
The disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design; or
(b)
The disclosure of the design in breach of good faith by any person other than the proprietor of the design; or
(c)
In the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design.
(2)
An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only—
(a)
That a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the proprietor of the design, at an international or industrial exhibition declared as such by the Commissioner by notice in the Journal, whether the exhibition is held in New Zealand or elsewhere ; or
(b)
That after any such display as aforesaid, and during the period of the exhibition, a representation of the design or any such article as aforesaid has been displayed by any person without the consent of the proprietor; or
(c)
That a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a) of this subsection,—
if the application for registration of the design is made not later than 6 months after the date of the opening of the exhibition.
(3)
An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a Government Department or to any person authorised by a Government Department to consider the merits of the design, or of anything done in consequence of such a communication.
Compare: Registered Designs Act 1949, s 6 (UK); 1921-22 No 18 ss 58, 63
Subsection (2)(a) was amended, as from 12 November 1980, by section 5(2) Shop Trading Hours Amendment Act 1980 (1980 No 36) by omitting the words “or at an exhibition authorised by the Governor-General by Order in Council under the Exhibitions Act 1910”.
Subsection (2)(a) was amended, as from 2 September 1996, by section 2 Designs Amendment Act 1996 (1996 No 118) by substituting the words “Commissioner by notice in the Journal” for the words “Governor-General by notice in the Gazette”.
The registration of a design under this Act shall give to the registered proprietor the copyright in the design, that is to say, the exclusive right in New Zealand to make or import for sale or for use for the purposes of any trade or business, or to sell, hire, or offer for sale or hire, any article in respect of which the design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid, whether in New Zealand or elsewhere.
(2)
Subject to the provisions of this Act and of subsection (3) of section 7 of the Crown Proceedings Act 1950, the registration of a design shall have the same effect against the Crown as it has against a subject.
Compare: Registered Designs Act 1949, s 7 (UK); 1921-22 No 18 ss 56(1), 66
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Period of copyright
(1)
Copyright in a registered design shall, subject to the provisions of this Act, subsist for a period of 5 years from the date of registration.
(2)
The Commissioner shall extend the period of copyright for a second period of 5 years from the expiration of the original period, and for a third period of 5 years from the expiration of the second period, if an application for extension of the period of copyright for the second period or third period is made in the prescribed form and the prescribed fee is also paid before the expiration of the original period or the second period, as the case may be, or if such application is made and the fee is paid within such further period (not exceeding 6 months) as may be specified in a request to the Commissioner and accompanied by the prescribed additional fee.
Compare: Registered Designs Act 1949, s 8 (UK); 1921-22 No 18 s 56
Subsection (2) was substituted, as from 20 October 1972, by section 2 Designs Amendment Act 1972 (1972 No 53).
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Exemption of innocent infringer from liability for damages, etc
(1)
In proceedings for the infringement of copyright in a registered design, damages or account of profits shall not be awarded against a defendant who proves that at the date of the infringement he was not aware and had no reasonable ground for supposing that the design was registered in New Zealand; and a person shall not be deemed to have been aware or to have had any reasonable ground for supposing as aforesaid by reason only of the marking of an article with the word registered or any abbreviation thereof, or any word or words expressing or implying that the design applied to the article has been registered, unless the word or words are accompanied by the words New Zealand or the letters NZ and by the number of the design.
(2)
Nothing in this section shall affect the power of the Court to grant an injunction in any proceedings for infringement of copyright in a registered design.
Compare: Registered Designs Act 1949, s 9 (UK); 1921-22 No 18 s 38
