Registered Designs – Protecting the Visual Appearance of Products
Registered designs are a means of protecting the time and money that you have invested in producing a new product or article with an appealing look. Registered designs are directed at features of shape, configuration, pattern or ornamentation applied to a product or article. Registered designs are about features that appeal to the eye, and for this reason it is not possible to register a design for a feature of shape or configuration that is dictated solely by the function of an article.
The owner of a registered design is provided with an exclusive right within a particular country to make, sell, import or use any article that the design is applied to. An “article” is essentially a product or part of a product if it is manufactured and sold independently.
The article can be three dimensional such as industrial or domestic goods or two dimensional such as wallpaper, textiles and packaging.
The design must be novel in relation to the article and in New Zealand this means that is must not have been known in New Zealand before the date of the first application for design registration.
A registered design for a product is similar to a claim to copyright in a product. The main difference is that a registered design includes an official registration process – a copy of the design, and details of the owner of the design, are recorded at the relevant intellectual property office, for example at IP Australia or at the Intellectual Property Office of New Zealand.
Copyright on the other hand is automatic, and does not involve a registration process. The advantage of obtaining a registered design, rather than relying on copyright, is that there is no requirement to prove that you are the owner of the design (as this is generally clear on the face of the design registration) and that actual copying of the design took place. If infringement of your registered design occurs, it is primarily only necessary to prove that the infringing product looks the same or very similar to your product. In addition, registered designs can be used to stop parallel importation, whereas copyright cannot. Copyright is thus best suited for artistic works or literary works that are not manufactured in an industrial sense.
Design registration can be sought concurrently with patent rights or copyright for different aspects of the same novel product. For example, a patent can protect the functional features of an article, while a registered design protects the time and effort put into making the article look good.
It is very important that you seek protection for your design by filing an application for a registered design before offering the product for sale or otherwise disclosing the product or design to others. If this is not possible, we recommend completing a confidentiality agreement before showing or discussing the design with third parties.
Overseas Design Applications
If you wish to file design applications in other countries, you can claim the filing date of your New Zealand application, provided that you file your overseas applications within six months of the filing date of your New Zealand application (the first application). This is important if you want to disclose your design without rendering your overseas applications invalid, and it means that you are more likely to trump applications filed overseas for similar designs.
There are differences in registered design law in many countries. For example the USA requires that the drawings filed with an application must meet a particular standard. Registered designs have different expiry dates and differing requirements for renewal fees in different countries. Also, some countries do not allow copyright protection for articles that have been, or could have been, registered as designs. We recommend that you contact us for more details concerning specific countries of interest.
How Pipers can help you
We can initially assess your design and provide advice as to whether design registration is the most suitable means of protecting your design, and whether it is possible to obtain a design registration. This may involve carrying out a design novelty search to help you to determine whether your design is novel and whether it is worth pursuing design registration. We can also perform an infringement search to determine whether you are going to infringe someone else’s design registration if you just want to commence manufacture and sale without the threat of being pursued for infringement.
We can file your registered design application on your behalf, which involves preparing a statement of novelty and preparing a suitable set of drawings of your article. Generally a minimum of seven drawings are required: views of the top, bottom, front, back, left and right, as well as at least one perspective view. The drawings must be in the form of black and white line drawings, with minimal detail. When the design application is examined by the Intellectual Property Office, we will respond to any objections raised by the examiner and attend to acceptance and registration formalities on your behalf.
We can also file any overseas design applications on your behalf. As noted above, this should be done within six months of the filing date of your New Zealand application, or other application if a first application was made in any other country.
We can also assist you in infringement matters whether you wish to sue for infringement of your rights, or whether you are being sued by the owner of a registered design right.
We can also provide a watching service where we can monitor any applications filed by your competitors. This allows you an opportunity to oppose your competitor’s applications before they reach registration if you believe that their application is not valid for any reason.
If your design application or registration is challenged we can help you defend it. Similarly, if you become aware of a competitor having a registration in place that you believe they should not be entitled to, we can help you challenge it.
For more on designs please see our FAQ’s section on the right.