Sunday, 1st October, 2017

Registered designs in Australia and New Zealand

Registered designs to protect a product shape can be a cost-effective and valuable form of intellectual prop- erty (IP). Registered designs are often very quick to be approved compared to other forms of IP. This provides the owner with enforceable rights well before many other forms of IP rights are granted for a product. Whilst cheap and quick to obtain, there is a general lack of use of registered designs in both countries.

In 2015 just over 7000 design applications were filed in Australia, around 3000 by Australian based applicants and 4000 arriving from overseas. Clothing and packaging still feature at the top of the  products  for  which  designs  are  filed  in Australia. Medical devices saw a 12%  growth  to 360 filings, from 2014–15. In New Zealand 1315 designs were filed in 2015. Of those 450 were by local applicants and 865 were received from overseas. At the top of the list were designs for packaging and automotive parts. Medical devices and clothing/jewellery also featured highly.

Take away tips

  • Ensure that a design application is filed before product disclosure. Whilst there are grace period provisions in Australia and New Zealand, they apply only in very limited circumstances.
  • In an infringement determination, use statements of newness/novelty wisely in order to help ensure that the value driving shape features gain stronger protection and incidental shape features have less influence over the scope of protection.
  • Don’t forget that in the absence of registered design protection in New Zealand, automatic copy- right protection may exist for product designs. Whilst asserting copyright may require more hoops to jump through compared to design infringement, it can offer an effective fall-back position.

Criteria for registration

The Designs Act 1953 (NZ) and the Designs Act 2003 (Cth) take slightly different approaches to registration criteria. In both countries, the most significant hurdle to registrability is originality in product shape when com- pared to prior art. For Australia, the law takes into account prior publications from anywhere in the world and prior use only in Australia. The New Zealand design law applies a local originality standard, meaning that only prior publications and prior use of any product in New Zealand can be taken into account to determine originality. Publications on the internet are taken to be publications in New Zealand.

Grace period provisions exist in both countries but they only apply in very limited circumstances. Given that such circumstances rarely apply, product designs should instead be kept confidential until after a regis- tered design application has been filed.

The degree of originality required in Australia is slightly higher than in New Zealand. In Australia designs need to be “new and distinctive” over the prior art, whereas in New Zealand they must be “new or original”. “Distinctive” means not substantially similar in overall impression, a higher threshold than originality. There- fore, some designs not registrable in Australia may be registrable in New Zealand.

Products that serve a purely functional purpose are not able to be registered in New Zealand. However, if such an objection is raised during patent office exami- nation, 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 selected shape is then generally not held to be purely functional if other shapes can achieve the same function. Australia has no such restriction.

The New Zealand design law allows for more than one product to be the subject of a single design appli- cation in certain circumstances. This can save costs. A set of articles can be registered if the articles are commonly used or on sale together. In practice, this also requires that there be some common shape features present. Articles such as a knife, fork and spoon set with a common shaped handle would qualify as a set of articles. Items of furniture also commonly feature as sets of articles. In Australia, it is possible to file a single design application for more than one design of multiple products if each product belongs to the same Locarno class. For example, multiple fabric designs could be applied to multiple products in the same class such as hand towels, bath towels and bath sheets. However, in Australia, there is no cost advantage to filing multiple designs in one application because each additional design is charged the same fee as a new application.

Product parts (without showing the entire product) are also able to be registered in both countries, for example, a lid for a paper coffee cup. In New Zealand,  a part of an article requires the part to be made and sold separately. In Australia, no such limitation exists.

Application procedure

In both countries a design application needs to be filed at the respective patent office. The application must include drawings with a sufficient number of views of the product to illustrate the product shape. In New Zealand, it is possible to file pictures of the product rather than line drawings. The design protection is not limited to colours of the product appearing in the photos. In Australia, representations of the design may be in the form of drawings, photographs, digital images and even actual samples if it can be easily mounted on a flat surface.

A statement of novelty must be filed in New Zealand, though this is optional for Australia (where it’s called a statement of newness and distinctiveness). If a statement of newness and distinctiveness is not filed in Australia, then to determine whether the application is new and distinct from another design, the examiner must inde- pendently consider the appearance of the design as a whole. However a statement may be beneficial as particular attention will be made to the features identi- fied in the statement. In a determination of infringement, using these state- ments, it is possible to focus the design registration on parts of the product drawn, thereby reducing the signifi- cance of the visual impact of the remainder of the product. In Australia, the Designs Act states that the design is as applied to a “product”. In the New Zealand Designs Act, the term “article” is used. There is some concern arising from some recent decisions in Australia where disclaimed subject matter has been taken into consideration (in order to consider the product as a whole) when determining infringement. For example, the arm of a chair might not be considered a product in a design where the statement of newness is directed at the arm of a chair and the rest of the chair is disclaimed. This may not be an issue in New Zealand, but there have been no decisions on this point.

Appropriate use of a statement of novelty/newness is essential to ensure that just the cross-section of extru- sions get protection and such are not being limited to a specific length of the extrusion.

Only a formalities examination occurs in Australia prior to registration. In New Zealand, a prior art search is conducted and may result in an originality objection. If objections are raised, the applicant has 1 year from the application date to rectify the application for  New Zealand. Whilst only a formalities check is made in Australia, before nforcing a registered design, it must be examined and certified. This is a post-registration examination and certification  process  and  can  take  4 to 8 months.

It is possible to request a delay of registration in New Zealand for up to 1 year from filing the design application. This may be desirable to prevent premature publication of a product. If no delay is requested then New Zealand registration typically takes 1 to 3 months from filing. This assumes no objections are raised during examination.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.

Duration of protection

A registered design in Australia has a maximum term of 10 years. New Zealand offers a longer maximum term of 15 years from filing.

Infringement

In both countries, a registered design gives the owner the exclusive right to make, use, sell and import the product that is the subject of the registered design.

In order to infringe a New Zealand or Australian registered design the offending 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 drink bottle”, a product that has the same shape but that is a vase 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) 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.

Automatic copyright protection for designs

Australian Copyright law (Copyright Act 1968 (Cth)) does not extend copyright protection for mass produced 3D products. This is not the case in New Zealand. The Copyright Act 1994 (NZ) effectively 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, though some leeway exists in respect of the exact numbers depending on the nature of the product. Accordingly, it is possible for 3D products to have both New Zealand registered design and copyright protection:

  • the former being stronger and easier to enforce rights but at a cost; and
  • the latter being free as it’s an automatic form of protection.

It’s important to note that if a registered design for a product is lapsed, the copyright in the product also expires. There are no restoration provisions for New Zealand registered designs. Australia generally does not offer automatic copyright protection for mass produced 3D products, except in special circumstances. Therefore, registered designs are particularly important in Australia as failure to register a design for your product in Australia may lead to complete lack of protection for the shape of a product.

Design ownership

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 employ- ment contract states otherwise.

The situation can get more complicated where a designer is a contractor to a company and not an employee, or where the designer’s employer or company is the contracting party. Australia’s Designs Act is clearer in this regard. However, to prevent design ownership disagreements, it is best to have a deed of assignment signed by all parties concerned prior to filing a design application, rather than relying on the default provisions of the Designs Act in both countries. Such an assignment should also include an assignment of copy- right.

The owner of a registered design has the right to personally use the design, or assign or license it. More than one person may be entitled to be the registered owner of the design.

Conclusion

There are several significant advantages of New Zealand design law over Australian design law. New Zealand provides a 5 years’ longer term of protection. In addi- tion, New Zealand design application gets examined for originality (eg there is a determination by the patent office that the shape of the article is different enough to prior art) as opposed to a mere formalities examination in Australia. Whilst it may make it slightly more expensive, there is more certainty that what is registered in New Zealand is valid. In the Australian design community there is a frustration about the poor protec- tion for product designs, due to the short term of Australian registered designs and the lack of any copy- right protection. Australia does have the advantage of being able to register purely functional designs, which has its uses. But in reality the New Zealand bar for having some aesthetic appeal is pretty low.

* This was originally posted on LexisNexis website.