A design registration provides protection for the appearance of a new or original design applied to a product.  The design may be in three dimensions (the shape or configuration of your product) or two dimensions (the pattern or ornamentation on your product). 

Why Register a Design?

If time and money have been expended producing a new design or product, design registration is justified to prevent competitors from unfairly taking advantage of those efforts.

The proprietor of a design registration has a monopoly to manufacture, sell, licence, import, and use goods embodying the protected design in New Zealand.

Misappropriation of a new design is less likely if an application is filed before approaching potential manufacturers and investors.  In addition, manufacturers are often reluctant to enter into a licensing agreement unless an application to register the design has been filed, as the existence of a design registration will ensure their investment will not subsequently be diminished by unfair competition.

If your design is infringed you may be able to claim damages (for any loss suffered), an account of profits earned by the infringer, litigation costs and/or delivery up of infringing goods.  Generally, litigation is not necessary to prevent infringement of a registered design. The existence of a design registration can be sufficient to deter competitors from copying and adequate marking will warn them of the existence of proprietary rights in the design.

How does a Design Registration compare with a Patent?

Registration of a design is less expensive than securing a granted patent. The procedures are simpler and enforceable protection is available much sooner. Registration can provide protection against copying the style of a preferred version of an invention until a patent is granted for the principle of operation and other embodiments.

Unlike designs however, patents can also protect ideas and principles of operation.

How does a Design Registration Compare with Copyright?

A registered design is essentially a registered form of copyright. The advantages of a design registration are that it confers a monopoly, date and ownership of the design is readily proved, and (unlike copyright) it is no defence to claim that the design was not actually copied.  The details of a registered design are published and searchable and will act as a deterrent to potential infringers. There is no system of registering copyright, so the deterrent effect is low.

Copyright does, however, rest automatically in the design drawings of a registered design.

What Can Be Registered?

Filing an application for registration does not guarantee that registration will be granted.  There are two main requirements for a design to be registrable:

It cannot be purely functional

A design registration does not protect aspects of your goods which purely relate to the function (i.e. the designer has no choice but to design the product in a particular shape because of the function it has to perform) unless these aspects also contribute to its appearance.  As most manufactured goods involve an element of designer choice, design protection is generally available. Sometimes, for simple objects, both patent and design registration is recommended.

It must be new or original

For a design to be registrable it must be novel (i.e. it must not have been previously applied to your goods). It is therefore important to avoid disclosure of the design before a design application is filed. Non-confidential disclosure includes such things as offers for sale, advertising, use or display of the article.

It must not be a work excluded from protection by legislation

Design registration cannot be obtained for works of sculpture, wall plaques, medals, and printed matter used primarily for literary or artistic purposes (for example greeting cards or playing cards).

After an application for registration is filed it will be examined by the Intellectual Property Office (IPONZ) to see whether the design is eligible for registration.  For more information refer to the IPOL section The Application Process. 

Dealing with your Application/Registration

Assignments

You can assign your design registration or pending application.  To give full effect to an assignment, a deed of assignment is usually required.

Licenses

You can license your design registration or pending application, so that others can use the design. 
Any licence agreement should be recorded in writing. The licensor should have sufficient control over use of its design to ensure appropriate standards of quality in the goods carrying the design are maintained.  The recordal of a licence on the Designs Register gives the licensee specific rights to the trade mark, including the right to sue an infringer of the trade mark registration.

Protecting your Registration

Cancellation of the Registration

Any interested person may apply to IPONZ or the Court for cancellation of a registered design on a number of grounds. The most common ground is that the design was not new or original at the date of filing.  The owner of the design can oppose the application for cancellation.

Compulsory Licence

Any interested person may apply to IPONZ for grant of a compulsory licence on the ground that the owner hasn’t used the design in New Zealand to the extent “reasonable” in the circumstances (this depends on the time to set up the machinery to manufacture your goods).  The owner of the design can oppose the application for compulsory licence.

Infringement

It is important to monitor other traders’ goods to see whether they infringe your registered design(s).  For a product to infringe, it must embody a design which is the same or not substantially different to that registered. When assessing similarity, if the registered design is quite unique, then large design differences may be necessary to avoid infringement, and vice versa.