The Place of Registered Designs in the New Zealand IP Landscape

Registered designs protect new and original aesthetic features of an article, such as the shape, configuration, pattern, and ornamentation. While there are similarities and overlap with other rights, registered designs provide a number of advantages that can be leveraged to best protect your intellectual property.

Registered Designs v Copyright

In New Zealand, an artistic work that is industrially applied is automatically protected by copyright. Copyright lasts for 16 years, starting from the time that the article is industrially applied i.e. the date on which 50 reproductions of the product have been produced. Where the production of the design involves some degree of craftsmanship, such as hand-painted tiles or stained glass, the copyright can last up to 25 years.

However, in order to enforce copyright, a design owner must establish a causal connection as well as objective similarity/substantial reproduction of the original work. If a third party develops the same design independently, a copyright offers no protection. Moreover, because copyright is automatically granted and there is no formal registry of copyright, it is often difficult to establish ownership.

In contrast, a registered design is a monopoly right – ownership is clearly recorded, and any articles that have substantially similar features infringe upon a design registration regardless of knowledge. Thus, design owners can request injunctions of infringing design even if they were conceived independently, though damages may be limited in such cases.

Registered Designs v Patents

Patents protect inventions. They protect the functionality of a product or process. Registered design protection can sit alongside patent protection since aesthetic features not protected by a patent. In other circumstances, patent protection may not be available, for example if there are novelty issues. In these cases, new visual aspects of the product could be protected by a registered design.

Design registrations are also considerably quicker to obtain; the process takes a matter of weeks in contrast to the prolonged periods required to prosecute a patent. This means that in the event that a third party markets a substantially similar article before the publishing or grant of a patent application, it remains possible to apply for an injunction and otherwise protect your article on the basis of a design registration.

Registered Designs v Trade marks (Shape marks)

Trade marks protect distinctive signs that are able to symbolise a business or its products, and differentiate the products or services of one business from another. Under the Trade Marks Act 2002, some distinctive design characteristics, such as shapes, can be registered as trade marks. However, all trade marks must be inherently distinctive. If the shape is a common feature of the product or has a functional purpose it will not be able to distinguish one company’s product from another. Consequently, registration of these design features is not easy. To register a shape on its own successfully, it may be necessary to prove that the design feature has acquired distinctiveness by use. It takes time to establish such a reputation, during which exclusive use of the mark is not guaranteed.

In cases like these, a design registration can be useful. Provided that the design is new and original, a registering the design can protect it for up to 15 years. If a strong reputation for the shape and its connection to the business is established before the end of the life of the design registration, a trade mark registration can be filed to continue protecting the design.

Key Takeaways

  • A design registration is a monopoly right which provides protection for new and original aesthetic features of an article.
  • A design registration can be acquired fairly quickly and provides exclusive rights to a design for up to 15 years.
  • Design registrations can be paired with patent or trade mark registrations to provide more complete or longer lasting protection for a product, for example for protecting a product while a patent is pending or a reputation is being established.
Charlene Lo - March 2023
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