The Designs Act 1953 – living on borrowed time?

Article  \  28 Nov 2023

26 November 2023 marked the 70th anniversary of the passing into law of the Designs Act 1953, which governs the registration of designs in New Zealand.

This rather outdated and underused statute remains in force (largely unamended) as the 'ugly duckling' of New Zealand’s registered intellectual property legislation. Indeed, the seminal text on New Zealand intellectual property law, Brown & Grant (1989), describes the Act as of "little relevance" and "only limited use."

By way of comparison, its siblings, the Trade Marks Act 1953 and the Patents Act 1953, were replaced with more modern versions in 2002 and 2013 respectively. In addition, the case law database at www.nzlii.org reveals only 17 decisions of the Commissioner of Designs, compared to 1,003 patent decisions and 1,147 trade mark decisions. To the best of our knowledge, there has never been a single appeal to the High Court from a Designs Act decision, and there are only a handful of High Court judgments on design infringement claims. This lack of jurisprudence can be frustrating given the absence in the Act of modern innovations such as a definition of infringement, or even a description of available remedies.

The limited use of the Designs Act is largely because, in New Zealand, designs that could be registered are automatically protected by copyright, negating the need to pay the additional cost of registration. This is an extremely unusual situation – most jurisdictions do not provide this dual protection.

However, design registration in New Zealand seems likely to gain importance, as indicated by the fact that the dual protection regime is a focus of the current, albeit slow-moving, government review of copyright law. Given the significant degree to which intellectual property laws tend to be aligned internationally, it would be reasonable to expect that New Zealand will eventually remove the dual protection.

Registration already provides a public record of ownership of rights to designs, which simplifies enforcement and allows competitors to be aware of, and avoid replicating, designs belonging to others. In the absence of copyright protection, registration of designs will inevitably gain even greater importance.

So, as we raise a glass to the platinum anniversary of the rather maligned and ignored Designs Act 1953, we might be forgiven for wondering how many more birthdays it will have.

AJ Park offers a full range of services for protecting and managing intellectual property, including design and copyright matters. For more information, or for help in protecting your intellectual property rights, reach out to one of our specialists.

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