Designs Act 1953 (reprinted as at 19 April 2011)

An Act to consolidate and amend certain enactments relating to designs
1 Short Title and commencement
(1) This Act may be cited as the Designs Act 1953.
(2) This Act shall come into force on a day to be appointed for the commencement thereof by the Governor-General by Proclam¬ation.
2 Interpretation
(1) In this Act, unless the context otherwise requires,—
article means any article of manufacture; and includes any part of an article if that part is made and sold separately assignee includes the personal representative of a deceased as¬signee; and references to the assignee of any person include references to the assignee of the personal representative or as¬signee of that person
Commissioner means the Commissioner of Designs Commonwealth means the British Commonwealth of Na¬tions; and includes every territory for whose international relations the Government of any country of the Common¬wealth is responsible
convention country, in any provision of this Act, means an entity for the time being declared by an order under section 20 to be a convention country for the purposes of that provision copyright has the meaning assigned to it by subsection (1) of section 11
Court means the High Court
design means features of shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye; but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform
Government Department means any Department or instru¬ment of the Executive Government of New Zealand Journal means the Patent Office Journal published under sub¬section (1) of section 112 of the Patents Act 1953 prescribed means prescribed by regulations made under this Act
proprietor has the meaning assigned to it by section 6 registered proprietor means the person or persons for the time being entered in the register of designs as proprietor of the design
set of articles means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.
(2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set.
(3) Any question arising under this Act as to whether a number of articles constitute a set of articles shall be determined by the Commissioner; and notwithstanding anything in this Act any determination of the Commissioner under this subsection shall be final.
(4) For the purposes of subsection (1) of section 21 and of sec¬tion 23, the expression personal representative, in relation to a deceased person, includes the legal representative of the de¬ceased appointed in any country outside New Zealand.
(5) In the case of an entity that is a convention country but is not a state, part of a state, or a territory for whose international relations a state is responsible,—
(a) a reference in this Act to—
(i) application for protection in a country; or
(ii) application for protection in respect of a coun¬try,—
must be read as a reference to application for protection under the rules of the entity:
(b) a reference in this Act to the law of a convention country must be read as a reference to the rules of the entity:
(c) a reference in this Act to the Government of a conven¬tion country must be read as a reference to the governing body of the entity.
Compare: Registered Designs Act 1949, s 44 (UK); 1921-22 No 18 s 2
Section 2(1) convention country: substituted, on 14 October 1999, by section 2(2) of the Designs Amendment Act 1999 (1999 No 120).
Section 2(1) Court: amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
Section 2(5): inserted, on 14 October 1999, by section 2(3) of the Designs Amendment Act 1999 (1999 No 120).
3 Commissioner of Designs
(1) There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Designs.
(2) The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed as Commissioner of Designs under this Act.
Compare: 1921-22 No 18 s 113
Section 3(1): amended, on 1 January 1963, by section 77(1) ofthe State Services Act 1962 (1962 No 132).
Section 3(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).
4 Assistant Commissioners of Designs and other officers
(1) There may from time to time be appointed under the State Sector Act 1988—
(a) one or more fit persons to be Assistant Commissioners of Designs:
(b) such other officers and employees as may be necessary for carrying out the purposes of this Act.
(2) Every Assistant Commissioner of Designs so appointed, while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and every refer¬ence in this or any other Act to the Commissioner shall, so far as may be necessary for the purpose of giving effect to the
provisions of this section, be deemed to include a reference to every Assistant Commissioner of Designs.
(3) The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed an Assistant Commissioner of Designs under this Act. Compare: 1921-22 No 18 ss 114, 115
Section 4(1): amended, on 1 January 1963, by section 77(1) of the State Services Act 1962 (1962 No 132).
Section 4(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).
Registrable designs and proceedings for registration
5 Designs registrable under Act
(1) Subject to the following provisions of this section, a design may, upon application made by the person claiming to be the proprietor, be registered under this Act in respect of any article or set of articles specified in the application.
(2) Subject to the provisions of this Act, a design shall not be regis¬tered thereunder unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in New Zealand in respect of the same or any other article or differs from such a design only in immaterial details or in features which are vari¬ants commonly used in the trade.
(3) Regulations made under this Act may provide for excluding from registration under this Act designs for such articles, being articles which are primarily literary or artistic in character, as may be specified in the regulations.
Compare: Registered Designs Act 1949, s 1 (UK); 1921-22 No 18 ss 2, 52
6 Proprietorship of designs
(1) Subject to the provisions of this section, the author of a design shall be treated for the purposes of this Act as the proprietor of the design:
provided that where the design is executed by the author for another person for good consideration, that other person shall be treated for the purposes of this Act as the proprietor.
(2) Where a design, or the right to apply a design to any article, becomes vested, whether by assignment, transmission, or op¬eration of law, in any person other than the original proprietor, either alone or jointly with the original proprietor, that other person, or, as the case may be, the original proprietor and that other person, shall be treated for the purposes of this Act as the proprietor of the design or as the proprietor of the design in relation to that article.
Compare: Registered Designs Act 1949, s 2 (UK); 1921-22 No 18 s 52(1)
7 Proceedings for registration
(1) An application for the registration of a design shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2) For the purpose of deciding whether a design is new or original the Commissioner may make such searches, if any, as he thinks fit.
(3) The Commissioner may refuse any application for the regis¬tration of a design or may register the design in pursuance of the application without modification or subject to such modi¬fications as he thinks fit.
(4) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be pre¬scribed shall be deemed to be abandoned.
(5) Except as otherwise expressly provided by this Act, a design when registered shall be registered as of the date on which the application for registration was made, or such other date (whether earlier or later than that date) as the Commissioner may in any particular case direct:
provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certifi¬cate of registration of the design under this Act is issued.
(6) An appeal to the Court shall lie from any decision of the Com¬missioner under subsection (3).
Compare: Registered Designs Act 1949, s 3 (UK); 1921-22 No 18 s 52
8 Registration of same design in respect of other articles, etc
(1) Where the registered proprietor of a design registered in re¬spect of any article makes an application—
(a) for registration, in respect of one or more other articles, of the registered design; or
(b) for registration, in respect of the same or one or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof,—
the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered de¬sign:
provided that the period of copyright in a design registered by virtue of this section shall not extend beyond the expiration of the original and any extended period of copyright in the original registered design.
(2) Where any person makes an application for the registration of a design in respect of any article and either—
(a) that design has been previously registered by another person in respect of some other article; or
(b) the design to which the application relates consists of a design previously registered by another person in re¬spect of the same or some other article with modifica¬tions or variations not sufficient to alter the character or substantially to affect the identity thereof,—
then, if at any time while the application is pending the appli¬cant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply
as if at the time of making the application the applicant had been the registered proprietor of that design.
Compare: Registered Designs Act 1949, s 4 (UK); 1921-22 No 18 s 53; 1939 No 26 s 69
9 Provisions for ensuring secrecy in respect of designs relevant for defence purposes
(1) Where, either before or after the commencement of this Act, an application for the registration of a design has been made, and it appears to the Commissioner that the design is one of a class notified to him by the Minister of Defence as relevant for defence purposes, or is in the opinion of the Commissioner likely to be valuable for defence purposes, he may give direc¬tions for prohibiting or restricting the publication of informa¬tion with respect to the design, or the communication of such information to any person or class of persons specified in the directions.
(2) Regulations may be made under this Act for securing that the representation or specimen of a design in the case of which directions are given under this section shall not be open to inspection at the Patent Office during the continuance in force of the directions.
(3) Where the Commissioner gives any such directions as afore¬said, he shall give notice of the application and of the direc¬tions to the Minister of Defence, and thereupon the following provisions shall have effect, that is to say:
(a) the Minister of Defence shall, upon receipt of the notice, consider whether the publication of the design would be prejudicial to the defence of NewZealand, and, unless a notice under paragraph (c) has previously been given by the Minister of Defence to the Commissioner, shall re¬consider that question before the expiration of 9 months from the date of filing of the application for registration of the design and at least once in every subsequent year:
(b) for the purpose aforesaid, the Minister of Defence may, at any time after the design has been registered or, with the consent of the applicant, at any time before the de¬sign has been registered, inspect the representation or specimen of the design filed in pursuance of the appli¬cation:
(c) if upon consideration of the design at any time it appears to the Minister of Defence that the publication of the design would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence shall give notice to the Commissioner to that effect:
(d) on the receipt of any such notice the Commissioner shall revoke the directions and may, subject to such condi¬tions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application or registra¬tion, whether or not that time has previously expired.
(4) No person resident in New Zealand shall, except under the au¬thority of a written permit granted by or on behalf of the Com¬missioner, make or cause to be made any application outside New Zealand for the registration of a design of any class pre¬scribed for the purposes of this subsection unless—
(a) an application for registration of the same or substan¬tially the same design has been made in New Zealand not less than 6 weeks before the application outside New Zealand; and
(b) either no directions have been given under subsection (1) in relation to the application in New Zealand or all such directions have been revoked:
provided that this subsection shall not apply in relation to a design for which an application for protection has first been filed in a country outside New Zealand by a person resident outside New Zealand.
Compare: Registered Designs Act 1949, s 5 (UK)
10 Provisions as to confidential disclosure, etc
(1) An application for the registration of a design shall not be re¬fused, and the registration of a design shall not be invalidated, by reason only of—
(a) the disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design; or
(b) the disclosure of the design in breach of good faith by any person other than the proprietor of the design; or
(c) in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design.
An application for the registration of a design shall not be re¬fused, and the registration of a design shall not be invalidated, by reason only—
(a) that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the proprietor of the design, at an international or industrial exhibition declared as such by the Commissioner by notice in the Journal, whether the exhibition is held in New Zealand or elsewhere ; or
(b) that after any such display as aforesaid, and during the period of the exhibition, a representation of the design or any such article as aforesaid has been displayed by any person without the consent of the proprietor; or
(c) that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a),—
if the application for registration of the design is made not later than 6 months after the date of the opening of the exhibition.
(3) An application for the registration of a design shall not be re¬fused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the pro¬prietor thereof to a Government Department or to any person authorised by a Government Department to consider the mer¬its of the design, or of anything done in consequence of such a communication.
Compare: Registered Designs Act 1949, s 6 (UK); 1921-22 No 18 ss 58, 63
Section 10(2)(a): amended, on 2 September 1996, by section 2 of the Designs Amendment Act 1996 (1996 No 118).
Section 10(2)(a): amended, on 12 November 1980, by section 5(2) of the Shop Trading Hours Amendment Act 1980 (1980 No 36).
Effect of registration, etc
11 Right given by registration
(1) The registration of a design under this Act shall give to the registered proprietor the copyright in the design, that is to say, the exclusive right in New Zealand to make or import for sale or for use for the purposes of any trade or business, or to sell, hire, or offer for sale or hire, any article in respect of which the design is registered, being an article to which the regis¬tered design or a design not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid, whether in New Zealand or elsewhere.
(2) Subject to the provisions of this Act and of subsection (3) of section 7 of the Crown Proceedings Act 1950, the registration of a design shall have the same effect against the Crown as it has against a subject.
Compare: Registered Designs Act 1949, s 7 (UK); 1921-22 No 18 ss 56(1), 66
12 Period of copyright
(1) Copyright in a registered design shall, subject to the provisions of this Act, subsist for a period of 5 years from the date of registration.
(2) The Commissioner shall extend the period of copyright for a second period of 5 years from the expiration of the original period, and for a third period of 5 years from the expiration of the second period, if an application for extension of the period of copyright for the second period or third period is made in the prescribed manner and the prescribed fee is also paid before the expiration of the original period or the second period, as the case may be, or if such application is made and the fee is paid within such further period (not exceeding 6 months) as may be specified in a request to the Commissioner and accompanied by the prescribed additional fee.
(3) Subsection (2) is subject to sections 41A to 41F (which pro¬vide for the restoration of lapsed copyright in a registered de¬sign).
Compare: Registered Designs Act 1949, s 8 (UK); 1921-22 No 18 s 56
Section 12(2): substituted, on 20 October 1972, by section 2 of the Designs Amendment Act 1972 (1972 No 53).
Section 12(2): amended, on 19 April 2011, by section 4(1) of the Designs Amendment Act 2010 (2010 No 15).
Section 12(3): added, on 19 April 2011, by section 4(2) of the Designs Amendment Act 2010 (2010 No 15).
13 Exemption of innocent infringer from liability for
damages, etc
(1) In proceedings for the infringement of copyright in a registered design, damages or account of profits shall not be awarded against a defendant who proves that at the date of the infringe¬ment he was not aware and had no reasonable ground for sup¬posing that the design was registered in New Zealand; and a person shall not be deemed to have been aware or to have had any reasonable ground for supposing as aforesaid by reason only of the marking of an article with the word registered or any abbreviation thereof, or any word or words expressing or implying that the design applied to the article has been regis¬tered, unless the word or words are accompanied by the words New Zealand or the letters NZ and by the number of the de¬sign.
(2) Nothing in this section shall affect the power of the Court to grant an injunction in any proceedings for infringement of copyright in a registered design.
Compare: Registered Designs Act 1949, s 9 (UK); 1921-22 No 18 s 38
14 Compulsory licence in respect of registered design
(1) At any time after a design has been registered any person inter¬ested may apply to the Commissioner for the grant of a com¬pulsory licence in respect of the design on the ground that the design is not applied in New Zealand by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case; and the Commissioner may make such order on the application as he thinks fit.
(2) An order for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed executed by the registered proprietor and all other neces¬sary parties, granting a licence in accordance with the order.
(3) No order shall be made under this section which would be at variance with any treaty, convention, arrangement, or engage¬ment applying to New Zealand and any convention country.
(4) An appeal to the Court shall lie from any order of the Com¬missioner under this section.
Compare: Registered Designs Act 1949, s 10 (UK); 1921-22 No 18 s 62
15 Cancellation of registration
(1) The Commissioner may, upon a request made in the prescribed manner by the registered proprietor, cancel the registration of a design.
(2) At any time after a design has been registered any person inter-ested may apply to the Commissioner for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new or original, or on any other ground on which the Commissioner could have re¬fused to register the design; and the Commissioner may make such order on the application as he thinks fit.
(3) An appeal to the Court shall lie from any order of the Com¬missioner under subsection (2).
Compare: Registered Designs Act 1949, s 11 (UK); 1921-22 No 18 s 61
Use of registered designs for services of the Crown
16 Use of registered designs for services of the Crown
(1) Notwithstanding anything in this Act, any Government De¬partment, and any person authorised in writing by a Govern¬ment Department, may use any registered design for the ser¬vices of the Crown in accordance with the following provi¬sions of this section.
(2) If and so far as the design has, before the date of registration thereof, been duly recorded by or applied by or on behalf of a Government Department otherwise than in consequence of the communication of the design directly or indirectly by the registered proprietor or any person from whom he derives title, any use of the design by virtue of this section may be made free of any royalty or other payment to the registered proprietor.
(3) If and so far as the design has not been so recorded or ap¬plied as aforesaid, any use of the design made by virtue of this section at any time after the date of registration thereof, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Government Department and the registered proprietor with the approval of the Minister of Fi¬nance, or as may in default of agreement be determined by the Court on a reference under section 18.
(4) The authority of a Government Department in respect of a de¬sign may be given under this section either before or after the design is registered and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not he is authorised directly or indi¬rectly by the registered proprietor to use the design.
(5) Where any use of a design is made by or with the authority of a Government Department under this section, then, unless it appears to the Department that it would be contrary to the public interest so to do, the Department shall notify the regis¬tered proprietor as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.
(6) For the purposes of this section and of section 17, any use of a design for the supply to the Government of any country out¬side New Zealand, in pursuance of any agreement or arrange¬ment between Her Majesty’s Government in New Zealand and the Government of that country, of articles required for the de¬fence of that country shall be deemed to be a use of the design for the services of the Crown; and the power of a Government Department or a person authorised by a Government Depart¬ment under this section to use a design shall include power—
(a) to sell such articles to the Government of any country in pursuance of any such agreement or arrangement as aforesaid; and
(b) to sell to any person any articles made in the exercise of the powers conferred by this section which are no longer required for the purpose for which they were made.
(7) The purchaser of any articles sold in the exercise of powers conferred by this section, and any person claiming through him, shall have power to deal with them in the same manner as if the rights in the registered design were held on behalf of Her Majesty.
Compare: Registered Designs Act 1949, First Schedule, para 1 (UK)
17 Rights of third parties in respect of Crown use
(1) In relation to any use of a registered design, or a design in re¬spect of which an application for registration is pending, made for the services of the Crown—
(a) by a Government Department or a person authorised by a Government Department under section 16; or
(b) by the registered proprietor or applicant for registration to the order of a Government Department,—
the provisions of any licence, assignment, or agreement made, whether before or after the commencement of this Act, be¬tween the registered proprietor or applicant for registration or any person who derives title from him or from whom he de¬rives title and any person other than a Government Department shall be of no effect so far as those provisions restrict or regu¬late the use of the design, or any model, document, or infor¬mation relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not constitute an infringe¬ment of any copyright subsisting in the model or document.
(2) Where an exclusive licence granted otherwise than for royal¬ties or other benefits determined by reference to the use of the design is in force under the registered design, then,—
(a) in relation to any use of the design which, but for the provisions of this section and section 16, would consti¬tute an infringement of the rights of the licensee, sub¬section (3) of section 16 shall have effect as if for the reference to the registered proprietor there were substi¬tuted a reference to the licensee; and
(b) in relation to any use of the design by the licensee by virtue of an authority given under section 16, that sec¬tion shall have effect as if subsection (3) of that section were omitted.
(3) Subject to the provisions of subsection (2), where the regis¬tered design or the right to apply for or obtain registration of the design has been assigned to the registered proprietor in consideration of royalties or other benefits determined by ref¬erence to the use of the design, then,—
(a) in relation to any use of the design by virtue of section 16, subsection (3) of that section shall have effect as if the reference to the registered proprietor included a ref¬erence to the assignor, and any sum payable by virtue of that subsection shall be divided between the registered proprietor and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the Court on a reference under section 18; and
(b) in relation to any use of the design made for the services of the Crown by the registered proprietor to the order of a Government Department, subsection (3) of section 16 shall have effect as if that use were made by virtue of an authority given under that subsection.
(4) Where, under subsection (3) of section 16, payments are re¬quired to be made by a Government Department to a registered proprietor in respect of any use of a design, any person being the holder of an exclusive licence under the registered design (not being such a licence as is mentioned in subsection (2)) au¬thorising him to make that use of the design shall be entitled to recover from the registered proprietor such part (if any) of those payments as may be agreed upon between that person and the registered proprietor, or as may in default of agree¬ment be determined by the Court under section 18 to be just having regard to any expenditure incurred by that person—
(a) in developing the said design; or
(b) in making payments to the registered proprietor, other than royalties or other payments determined by refer¬ence to the use of the design, in consideration of the licence,—
and if, at any time before the amount of any such payment has been agreed upon between the Government Department and the registered proprietor, that person gives notice in writing of his interest to the Department, any agreement as to the amount
of that payment shall be of no effect unless it is made with his consent.
(5) In this paragraph exclusive licence means a licence from the registered proprietor which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the registered proprietor), any right in respect of the registered design.
Compare: Registered Designs Act 1949, First Schedule, para 2 (UK)
18 Reference of disputes as to Crown use
(1) Any dispute as to the exercise by a Government Department or a person authorised by a Government Department of the powers conferred by section 16, or as to terms for the use of a design for the services of the Crown thereunder, or as to the right of any person to receive any part of a payment made in pursuance of subsection (3) of that section, may be referred to the Court by either party to the dispute in such manner as may be prescribed by rules of Court.
(2) In any proceedings under this section to which a Government Department is a party, the Department may,—
(a) if the registered proprietor is a party to the proceedings, apply for cancellation of the registration of the design upon any ground upon which the registration of a design may be cancelled on an application to the Court under section 28:
(b) in any case, put in issue the validity of the registration of the design without applying for its cancellation.
(3) If in such proceedings as aforesaid any question arises whether a design has been recorded or applied as mentioned in section 16, and the disclosure of any document recording the design, or of any evidence of the application thereof, would in the opinion of the Department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.
(4) In determining under this paragraph any dispute between a Government Department and any person as to terms for the use of a design for the services of the Crown, the Court shall have regard to any benefit or compensation which that person or any person from whom he derives title may have received,
or may be entitled to receive, directly or indirectly from any Government Department in respect of the design in question.
(5) In any proceedings under this section the Court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the Court may direct; and ref¬erences to the Court in the foregoing provisions of this section shall be construed accordingly.
Compare: Registered Designs Act 1949, First Schedule, para 3 (UK)
19 Special provisions as to Crown use during emergency
(1) During any period of emergency within the meaning of this section the powers exercisable in relation to a design by a Gov¬ernment Department, or a person authorised by a Government Department under section 16, shall include power to use the design for any purpose which appears to the Department ne¬cessary or expedient—
(a) for the efficient prosecution of any war in which Her Majesty may be engaged; or
(b) for the maintenance of supplies and services essential to the life of the community; or
(c) for securing a sufficiency of supplies and services es¬sential to the well-being of the community; or
(d) for promoting the productivity of industry, commerce, and agriculture; or
(e) for fostering and directing exports and reducing im¬ports, or imports of any classes, from all or any coun¬tries and for redressing the balance of trade; or
(f) generally for ensuring that the whole resources of the community are available for use, and are used, in a man¬ner best calculated to serve the interests of the commu¬nity; or
(g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any part of the Commonwealth or of the Republic of Ireland or in any foreign countries that are in grave distress as a result of war; or
(h) for providing or securing supplies and services required for the defence of any part of the Commonwealth or for the maintenance or restoration of peace and security in any part of the world, or for any measures arising out of a breach or apprehended breach of peace in any part of the world; or
(i) for preventing supplies or services being disposed of in a manner prejudicial to the defence of any part of the Commonwealth or to peace and security in any part of the world or to any such measures as aforesaid,— and any reference in sections 16 to 18 to the services of the Crown shall be construed as including a reference to the pur¬poses aforesaid.
(2) In this section the expression period of emergency means any period beginning on such date as may be declared by Order in Council published in the Gazette to be the commencement, and ending on such date as may be so declared to be the termin¬ation, of a period of emergency for the purpose of this section.
(3) All Orders in Council made under this section shall be laid before Parliament within 28 days after the date of the mak¬ing thereof if Parliament is then in session, and, if not, shall be laid before Parliament within 28 days after the date of the commencement of the next ensuing session.
Compare: Registered Designs Act 1949, First Schedule, para 4 (UK)
International arrangements
20 Orders in Council as to convention countries
For the purpose of giving effect to any international agreement or arrangement to which New Zealand is a party or that applies to New Zealand, the Governor-General may by Order in Coun¬cil declare that any entity specified in the order that is a party to the agreement or arrangement or to which the agreement or arrangement applies (whether a state, part of a state, a territory for whose international relations a state is responsible, a pol¬itical union, an international organisation, or any other entity) is, for the purposes of all or any of the provisions of this Act, a convention country.
Section 20: substituted, on 14 October 1999, by section 2(1) of the Designs Amendment Act 1999 (1999 No 120).
21 Registration of design where application for protection in convention country has been made
(1) An application for registration of a design in respect of which protection has been applied for in a convention country may be made in accordance with the provisions of this Act by the person by whom the application for protection was made or his personal representative or assignee:
provided that no application shall be made by virtue of this section after the expiration of 6 months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.
(2) A design registered on an application made by virtue of this section shall be registered as of the date of the application for protection in the convention country, or where more than one such application for protection has been made, the date of the first such application:
provided that no proceedings shall be taken in respect of any infringement committed before the date on which the certifi¬cate of registration of the design under this Act is issued.
(3) An application for the registration of a design made by virtue of this section shall not be refused, and the registration of a design on such an application shall not be invalidated, by rea¬son only of the registration or publication of the design in New Zealand during the period specified in the proviso to subsec¬tion (1) as that within which the application for registration may be made.
(4) Where a person has applied for protection for a design by an application which,—
(a) in accordance with the terms of a treaty subsisting be¬tween 2 or more convention countries, is equivalent to an application duly made in any one of those conven¬tion countries; or
(b) in accordance with the law of any convention country, is equivalent to an application duly made in that con¬vention country,—
he shall be deemed for the purposes of this section to have applied in that convention country.
(5) For the purposes of this section, where more than one appli¬cation for protection in a convention country has been made, the first application may be disregarded and the second appli¬cation shall be substituted for the first application where—
(a) the first application was made in or in respect of the same convention country and by the same applicant as the second application; and
(b) not later than the date of filing of the second appli¬cation, the first application was unconditionally with¬drawn, abandoned, or refused; and
(c) the first application had not been made available to the public in New Zealand or elsewhere before its uncondi¬tional withdrawal, abandonment, or refusal; and
(d) no rights remain outstanding in respect of the first ap¬plication; and
(e) the first application has not served as a basis for claim¬ing a right of priority in relation to another application in any country.
Compare: Registered Designs Act 1949, s 14 (UK); 1939 No 26 s 55
Section 21(5): inserted, on 2 September 1996, by section 3 of the Designs Amendment Act 1996 (1996 No 118).
22 Extension of time for applications under section 21 in certain cases
(1) If the Governor-General is satisfied that provision substan¬tially equivalent to the provision to be made by or under this section has been or will be made under the law of any conven¬tion country, he may, by Order in Council, make regulations empowering the Commissioner to extend the time for making application under subsection (1) of section 21 for registration of a design in respect of which protection has been applied for in that country in any case where the period specified in the proviso to that subsection expires during a period prescribed by the regulations.
(2) Regulations made under this section—
(a) may, where any agreement or arrangement has been made between Her Majesty’s Government in New Zealand and the Government of the convention country for the supply or mutual exchange of information or articles, provide, either generally or in any class of case specified in the regulations, that an extension of time shall not be granted under this section unless the design has been communicated in accordance with the agreement or arrangement:
may, either generally or in any class of case specified in the regulations, fix the maximum extension which may be granted under this section:
may prescribe or allow any special procedure in connec¬tion with applications made by virtue of this section:
may empower the Commissioner to extend, in relation to an application made by virtue of this section, the time limited by or under the foregoing provisions of this Act for doing any act, subject to such conditions, if any, as may be imposed by or under the regulations:
may provide for securing that the rights conferred by registration on an application made by virtue of this sec¬tion shall be subject to such restrictions or conditions as may be specified by or under the regulations and in par¬ticular to restrictions and conditions for the protection of persons (including persons acting on behalf of Her Majesty) who, otherwise than as the result of a commu¬nication made in accordance with such an agreement or arrangement as is mentioned in paragraph (a) , and be¬fore the date of the application in question or such later date as may be allowed by the regulations, may have imported or made articles to which the design is applied or may have made an application for registration of the design.
Compare: Registered Designs Act 1949, s 15 (UK); 1943 No 6 s 5
23 Protection of designs communicated under arrangements with other countries
(1) Subject to the provisions of this section, regulations may be made under this Act for securing that, where a design has been communicated in accordance with an agreement or ar¬rangement made between Her Majesty’s Government in New Zealand and the Government of any other country for the sup¬ply or mutual exchange of information or articles,—
(a) an application for the registration of the design made by the person from whom the design was communicated, or his personal representative or assignee, shall not be prejudiced, and the registration of the design in pur¬suance of such an application shall not be invalidated, by reason only that the design has been communicated as aforesaid or that in consequence thereof—
(i) the design has been published or applied; or
(ii) an application for registration of the design has been made by any other person, or the design has been registered on such an application:
(b) any application for the registration of a design made in consequence of such a communication as aforesaid may be refused and any registration of a design made on such an application may be cancelled.
(2) Regulations made under subsection (1) may provide that the publication or application of a design, or the making of any ap-plication for registration thereof, shall, in such circumstances and subject to such conditions or exceptions as may be pre¬scribed by the regulations, be presumed to have been in con¬sequence of such a communication as is mentioned in that sub¬section.
(3) The power to make regulations under this section, so far as it is exercisable for the benefit of persons from whom de¬signs have been communicated to Her Majesty’s Government in New Zealand by the Government of any other country, shall only be exercised if and to the extent that the Governor-Gen¬eral is satisfied that substantially equivalent provision has been or will be made under the law of that country for the benefit of persons from whom designs have been communicated by Her Majesty’s Government in New Zealand to the Government of that country.
(4) References in subsection (3) to the communication of a de¬sign to or by Her Majesty’s Government in New Zealand or the Government of any other country shall be construed as in¬cluding references to the communication of the design by or to any person authorised in that behalf by the Government in question.
Compare: Registered Designs Act 1949, s 16 (UK); 1946 No 32 s 4
24 Regulations under section 22 or section 23
Any regulations made under section 22 or section 23, and any order made, direction given, or other action taken under the regulations by the Commissioner, may be made, given, or taken so as to have effect as respects things done or omitted to be done on or after such date, whether before or after the coming into operation of the regulations or of this Act, as may be specified in the regulations.
Compare: Registered Designs Act 1949, s 37(2) (UK); 1943 No 6 s 7
Register of designs, etc
25 Register of designs
(1) There shall be kept at the Patent Office under the control of the Commissioner a register of designs, in which there shall be entered the names and addresses of proprietors of registered designs, notices of assignments and of transmissions of regis¬tered designs, and such other matters as may be prescribed or as the Commissioner may think fit.
(2) Subject to the provisions of this Act and to regulations made thereunder, the register of designs shall, at all convenient times, be open to inspection by the public; and certified copies sealed with the seal of the Patent Office of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.
(3) The register of designs shall be prima facie evidence of any matters required or authorised by this Act to be entered therein.
(4) No notice of any trust, whether expressed, implied, or con¬structive, shall be entered in the register of designs, and the Commissioner shall not be affected by any such notice.
Compare: Registered Designs Act 1949, s 17 (UK); 1921-22 No 18 ss 55, 118, 119
26 Certificate of registration
(1) The Commissioner shall grant a certificate of registration in the prescribed form to the registered proprietor of a design when the design is registered.
(2) The Commissioner may, in a case where he is satisfied that the certificate of registration has been lost or destroyed, or in any other case in which he thinks it expedient, on application made to him in the prescribed manner and on payment of the prescribed fee, furnish a further certificate.
Compare: Registered Designs Act 1949, s 18 (UK); 1921-22 No 18 s 54
27 Registration of assignments, etc
(1) Where any person becomes entitled by assignment, transmis¬sion, or operation of a law to a registered design or to a share in a registered design, or becomes entitled as mortgagee, li¬censee, or otherwise to any other interest in a registered design, he shall apply to the Commissioner in the prescribed manner for the registration of his title as proprietor or co-proprietor, or, as the case may be, of notice of his interest, in the register of designs.
(2) Without prejudice to the provisions of subsection (1), an appli¬cation for the registration of the title of any person becoming entitled by assignment to a registered design or a share in a registered design, or becoming entitled by virtue of a mort¬gage, licence, or other instrument to any other interest in a registered design, may be made in the prescribed manner by the assignor, mortgagor, licensor, or other party to that instru¬ment, as the case may be.
(3) Where application is made under this section for the registra¬tion of the title of any person, the Commissioner shall, upon proof of title to his satisfaction,—
(a) where that person is entitled to a registered design or a share in a registered design, register him in the register of designs as proprietor or co-proprietor of the design, and enter in that register particulars of the instrument or event by which he derives title; or
(b) where that person is entitled to any other interest in the registered design, enter in that register notice of his in¬terest, with particulars of the instrument (if any) creat¬ing it.
(4) Subject to any rights vested in any other person of which no¬tice is entered in the register of designs, the person or persons registered as proprietor of a registered design shall have power to assign, grant licences under, or otherwise deal with the de¬sign, and to give effectual receipts for any consideration for any such assignment, licence, or dealing: provided that any equities in respect of the design may be en¬forced in like manner as in respect of any other personal prop¬erty.
(5) Except for the purposes of an application to rectify the regis¬ter under the following provisions of this Act, a document in respect of which no entry has been made in the register of de¬signs under subsection (3) shall not be admitted in any Court as evidence of the title of any person to a registered design or share of or interest in a registered design unless the Court otherwise directs.
Compare: Registered Designs Act 1949, s 19 (UK); 1921-22 No 18 s 122
27A Application of Personal Property Securities Act 1999
Nothing in sections 25 to 27 affects the operation of the Per¬sonal Property Securities Act 1999.
Section 27A: inserted, on 1 May 2002, by section 191(1) of the Personal Property Securities Act 1999 (1999 No 126).
28 Rectification of register by the Court
(1) The Court may, on the application of any person aggrieved, order the register of designs to be rectified by the making of any entry therein or the variation or deletion of any entry therein.
(2) In proceedings under this section the Court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register.
(3) Notice of any application to the Court under this section shall be given in the prescribed manner to the Commissioner, who shall be entitled to appear and be heard on the application, and shall appear if so directed by the Court.
(4) Any order made by the Court under this section shall direct that notice of the order shall be served on the Commissioner in the prescribed manner; and the Commissioner shall, on receipt of the notice, rectify the register accordingly.
Compare: Registered Designs Act 1949, s 20 (UK); 1921-22 No 18 s 123
29 Power of Commissioner to correct errors
(1) Where a mistake exists in the register of designs or in any document issued under this Act by reason of any error or omis¬sion on the part of the Patent Office, the Commissioner may, in accordance with the provisions of this section, correct the mistake, and for that purpose may require the production of the document.
(2) Where the Commissioner proposes to make any such correc¬tion as aforesaid he shall give notice of the proposal to the per¬sons who appear to him to be concerned, and shall give them an opportunity to be heard before making the correction.
(3) Where a mistake exists in the register of designs, or in any ap-plication for registration of a design or other document filed in pursuance of such an application, or in any proceedings in con-nection with any design, by reason of an error or an omission on the part of the proprietor of the design or of the applicant for registration of the design or of any other person concerned, a correction may be made in accordance with the provisions of this section upon a request in writing by any person inter¬ested and payment of the prescribed fee. If it appears to the Commissioner that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons likely to be affected thereby, he shall require notice of the nature of the proposed correction to be advertised in the prescribed manner.
(4) Within the prescribed time after any such advertisement as aforesaid, any person interested may give notice to the Com-missioner of opposition to the request, and where any such no¬tice of opposition is given the Commissioner shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard be¬fore he decides the case.
(5) An appeal to the Court shall lie from any decision of the Com-missioner under this section.
Compare: Registered Designs Act 1949, s 21 (UK); 1921-22 No 18 s 121; 1946 No 32 s 7
30 Inspection of registered designs
(1) Subject to the following provisions of this section and to any regulations made in pursuance of subsection (2) of section 9, the representation or specimen of a design registered under this Act shall be open to inspection at the Patent Office on and after the day on which the certificate of registration is issued.
(2) In the case of a design registered in respect of an article of any class prescribed for the purposes of this subsection, no repre¬sentation or specimen of the design filed in pursuance of the application shall, until the expiration of such period after the day on which the certificate of registration is issued as may be prescribed in relation to articles of that class, be open to inspec¬tion at the Patent Office except by the registered proprietor, a person authorised in writing by the registered proprietor, or a person authorised by the Commissioner or by the Court: provided that where the Commissioner proposes to refuse an application for the registration of any other design on the ground that it is the same as or differs only in immaterial details or in features which are variants commonly used in the trade, the applicant shall be entitled to inspect the repre¬sentation or specimen of the first-mentioned design filed in pursuance of the application for registration of that design.
(3) In the case of a design registered in respect of an article of any class prescribed for the purposes of subsection (2), the repre¬sentation or specimen of the design shall not, during the period prescribed as aforesaid, be inspected by any person by virtue of this section except in the presence of the Commissioner or of a member of his staff acting under him; and, except in the case of an inspection authorised by the proviso to that subsec¬tion, the person making the inspection shall not be entitled to take a copy of the representation or specimen of the design or any part thereof.
(4) Where an application for the registration of a design has been abandoned or refused, neither the application for registration nor any representation or specimen of the design filed in pur¬suance thereof shall at any time be open to inspection at the Patent Office or be published by the Commissioner.
(5) However, nothing in this section prevents the Commissioner from publishing any of the following:
(a) the date of an application for the registration of a design:
(b) the number of an application for the registration of a design:
(c) any details of an application for the registration of a design that are required to be in the application form.
Compare: Registered Designs Act 1949, s 22 (UK); 1921-22 No 18 ss 59, 120
Section 30(5): added, on 19 April 2011, by section 5 of the Designs Amendment Act 2010 (2010 No 15).
31 Information as to existence of copyright
On the request of any person furnishing such information as may enable the Commissioner to identify the design, and on payment of the prescribed fee, the Commissioner shall inform him whether the design is registered, and, if so, in respect of what articles, and whether any extension of the period of copy¬right has been granted, and shall state the date of registration and the name and address of the registered proprietor.
Compare: Registered Designs Act 1949, s 23 (UK); 1921-22 No 18 s 60
32 Evidence of entries, documents, etc
(1) A certificate purporting to be signed by the Commissioner and certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence of the matters so certified.
(2) A copy of any entry in the register of designs or of any repre-sentation, specimen, or document kept in the Patent Office or an extract from the register or any such document, purporting to be certified by the Commissioner and to be sealed with the seal of the Patent Office, shall be admitted in evidence without further proof and without production of the original.
Compare: Registered Designs Act 1949, s 24 (UK); 1921-22 No 18 ss 130,131
Legal proceedings and appeals
33 Certificate of contested validity of registration
(1) If in any proceedings before the Court the validity of the regis¬tration of a design is contested, and it is found by the Court that the design is validly registered, the Court may certify that the
validity ofthe registration ofthe design was contested in those proceedings.
(2) Where any such certificate has been granted, then, if in any subsequent proceedings before the Court for infringement of the copyright in the registered design or for cancellation of the registration of the design a final order or judgment is made or given in favour of the registered proprietor, he shall, unless the Court otherwise directs, be entitled to his costs as between solicitor and client:
provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.
Compare: Registered Designs Act 1949, s 25 (UK); 1921-22 No 18 s 40
34 Remedy for groundless threats of infringement proceedings
(1) Where any person (whether entitled to or interested in a regis¬tered design or an application for registration of a design or not) by circulars, advertisements, or otherwise threatens any other person with proceedings for infringement of the copy¬right in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in subsection (2).
(2) Unless in any action brought by virtue of this section the defen¬dant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringe¬ment of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following relief, that is to say:
(a) a declaration to the effect that the threats are unjustifi¬able; and
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(3) For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section.
Compare: Registered Designs Act 1949, s 26 (UK); 1921-22, No 65
35 Appeal to High Court
(1) Every appeal under this Act against a decision of the Commis¬sioner shall be to the High Court.
(2) Notice of every such appeal shall be filed in the Court and served upon the Commissioner within 28 days after the day on which the decision appealed against was given.
(3) In any such appeal the Court shall have and may exercise the same discretionary powers as are conferred upon the Commis¬sioner.
(4) Except with the leave of the High Court or of the Court of Appeal, no appeal shall lie from any decision of the High Court on an appeal against a decision of the Commissioner.
Compare: 1921-22 No 18 s 140
Section 35(1): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
Section 35(4): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
Powers and duties of Commissioner
36 Exercise of discretionary powers of Commissioner
Without prejudice to any provisions of this Act requiring the Commissioner to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, the Commissioner shall give to any applicant for registration of a design an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Commissioner by or under this Act.
Compare: Registered Designs Act 1949, s 29 (UK); 1921-22 No 18 s 124
37 Commissioner may grant extension of time
(1) Where by this Act anything is required to be done within a prescribed time, and by reason of delay in the Patent Office the thing is not so done, the Commissioner may extend the time for the doing of the thing.
(2) No fees shall be payable in respect of any extension of time granted under this section.
(3) The powers conferred on the Commissioner by this section may be exercised notwithstanding that in any case the time limited may have expired.
Compare: 1921-22 No 18 s 125
37A Additional provisions for extending time limits
(1) The Commissioner may extend the time prescribed in subsec¬tion (1) of section 21 for the filing of an application under that section on such terms (if any) as he thinks fit where he is sat¬isfied that the circumstances warrant the extension.
(2) Notwithstanding subsection (1), the Commissioner shall refuse to grant an extension of time under that subsection if in his opinion—
(a) the applicant or his agent has not allowed a reasonable margin of time for the delivery to the Patent Office, by post or otherwise, of any documents relating to the mat¬ter in respect of which the application for the extension of time is made; or
(b) the applicant or his agent has in any other way failed to act with due diligence and prudence in respect of such matter; or
(c) there has been undue delay in bringing the application for the extension of time or in prosecuting the applica¬tion.
(3) Every extension of time granted under this section shall be advertised in the Journal in the prescribed manner.
(4) Where an application is made for an extension of time under this section by an agent on behalf of any applicant, the Com¬missioner may as a condition of granting the application re¬quire that written confirmation that the application is author¬ised shall be signed or executed by the applicant and lodged with the Commissioner within such time as the Commissioner specifies.
(5) Any extension of time under this section, and any requirement given or other action taken by the Commissioner under this section, may be granted, given, or taken so as to have effect in respect of things done or omitted to be done before the com¬mencement of this section, as long as the application for the extension of time has been made before registration of the de- sign in respect of which the application under this section has been made.
(6) The Governor-General may, from time to time, by Order in Council, make regulations for all or any of the following pur¬poses:
(a) for the protection of persons who at any time in good faith have begun to avail themselves of any design that is the subject-matter of a matter in respect of which any application under this section is made:
(b) prescribing the evidence that the Commissioner may ac¬cept in support of applications under this section:
(c) prescribing the manner of advertising in the Journal ex-tensions of time granted under this section:
(d) prescribing the grounds of opposition to applications under this section:
(e) regulating the procedure to be followed in relation to applications under this section and opposition to such applications:
(f) prescribing the fees to be paid in respect of applications under this section.
Section 37A: inserted, on 20 October 1972, by section 3 of the Designs Amendment Act 1972 (1972 No 53).
38 Costs and security for costs
(1) The Commissioner may, in any proceedings before him under this Act, by order award to any party such costs as he may con¬sider reasonable, and direct how and by what parties they are to be paid; and any such order may be entered as a judgment of the Court and, with the leave of the Court, may be enforced accordingly.
(2) If any party by whom application is made to the Commissioner for the cancellation of the registration of a design or for the grant of a licence in respect of a registered design, or by whom notice of appeal is given from any decision of the Commis¬sioner under this Act, neither resides nor carries on business in New Zealand, the Commissioner, or, in the case of appeal, the Court, may require him to give security for the costs of the proceedings or appeal, and in default of such security being given may treat the application or appeal as abandoned.
Compare: Registered Designs Act 1949, s 30 (UK); 1921-22 No 18 ss 45, 127
39 Evidence before Commissioner
(1) Subject to regulations made under this Act, the evidence to be given in any proceedings before the Commissioner under this Act may be given by affidavit or statutory declaration; but the Commissioner may if he thinks fit in any particular case take oral evidence instead of or in addition to such evidence as aforesaid, and may allow any witness to be cross-examined on his affidavit or declaration. Any such statutory declaration may, in the event of an appeal under this Act, be used before the Court instead of evidence by affidavit, and where so used shall have all the incidents and consequences of evidence by affidavit.
(2) Subject to any such regulations as aforesaid, the Commis¬sioner shall in respect of requiring the attendance and the examination of witnesses on oath and the discovery and production of documents have the same powers as the Com¬missioner of Patents has in proceedings under the Patents Act 1953.
(3) Any evidence given on oath before the Commissioner shall be deemed to be given in a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961.
(4) Section 111 of the Crimes Act 1961 shall apply to every affi¬davit and statutory declaration made for the purposes of this Act.
Compare: Registered Designs Act 1949, s 31 (UK); 1921-22 No 18 s 129
Section 39(3): amended, on 1 January 1962, by section 412(2) of the Crimes Act 1961 (1961 No 43).
Section 39(4): amended, on 1 January 1962, by section 412(2) of the Crimes Act 1961 (1961 No 43).
40 Recognition of agents
Where by this Act any act has to be done by or to any person in connection with a registered design or proposed registered design or any proceedings relating thereto, the act may, unless otherwise prescribed, be done by or to an agent of that person duly authorised in the prescribed manner.
Compare: 1921-22 No 18 s 136
41 Commissioner may dispense with production of probate or letters of administration in certain cases
(1) For the purposes of this section, unless the context otherwise requires,—
deceased proprietor means a registered proprietor of any de¬sign who has died, whether before or after the commencement of this Act; and includes any applicant for the registration of a design who has died before it is registered, whether before or after the commencement of this Act
qualified person, in relation to any deceased proprietor, means a person who satisfies the Commissioner—
(a) that he has obtained or is entitled to obtain probate of the will of the deceased proprietor or letters of admin¬istration in his estate in the place where the deceased proprietor was domiciled at his death, or that he is the legal representative of the deceased proprietor in that place:
(b) that probate of the will of the deceased proprietor or let¬ters of administration in his estate have not been granted or resealed in New Zealand:
(c) [Repealed]
(d) that the interests of the creditors of the deceased propri¬etor, and of all persons beneficially interested under his will or on his intestacy, will be adequately safeguarded if the Commissioner of Designs registers the qualified person as the proprietor of the design.
(2) Upon application in the prescribed manner and payment of the prescribed fees, the Commissioner of Designs, in his discre¬tion and without requiring the production of probate or letters of administration, may,—
(a) where the registered proprietor of any design has died, whether before or after the commencement of this Act, register any qualified person as the proprietor of the de¬sign:
(b) where an applicant for the registration of a design has died before the registration of the design, whether be¬fore or after the commencement of this Act, allow any qualified person to complete the application and may register that person as the proprietor of the design.
(3) Every qualified person who is registered under this section as the proprietor of a design shall hold it subject to all existing interests and equities affecting it.
(4) Nothing in sections 70 or 73 of the Administration Act 1969 shall be deemed to restrict the operation of this section.
Compare: 1947 No 37 s 5
Section 41(1) qualified person: amended, on 21 July 1955, pursuant to section 89(7) of the Estate and Gift Duties Act 1955 (1955 No 105).
Section 41(1) qualified person paragraph (c): repealed, on 24 May 1999, by section 17 of the Estate Duty Repeal Act 1999 (1999 No 64).
Section 41(4): amended, on 1 January 1971, by section 84(1) of the Administration Act 1969 (1969 No 52).
Restoration of lapsed copyright in registered design
Heading: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41A Restoration of lapsed copyright in registered design
(1) This section applies if the period of copyright in a registered design has ended by reason of a failure to make an application under section 12(2) or to pay the prescribed fee under section 12(2) (or both).
(2) The Commissioner may, on a request made in the prescribed manner and in accordance with sections 41B to 41F, by order extend the period of copyright in a registered design for a sec¬ond or third period of 5 years as provided for in section 12(2) if the Commissioner is satisfied that the relevant failure to com¬ply with section 12(2) was unintentional.
(3) A request for an order under this section must contain a state¬ment that fully sets out the circumstances that led to the rele¬vant failure to comply with section 12(2).
(4) The Commissioner may require the person who makes the re¬quest to provide any further evidence that the Commissioner thinks fit.
(5) An appeal to the Court may be made from any decision of the Commissioner under this section or sections 41B to 41F.
Section 41A: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41B Persons who may make request for restoration of copyright
(1) A request for an order under section 41A may be made by the person who was the registered proprietor or, if that person is deceased, by that person’s personal representative.
(2) If there were 2 or more registered proprietors, the request for an order under section 41A may, with the leave of the Com¬missioner, be made by 1 or more of them without joining the others.
Section 41B: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41C When request for restoration of copyright may be made
(1) A request for an order under section 41A may only be made within the prescribed period.
(2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satis¬fied that there was no undue delay in making the request.
(3) The person who makes the request must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.
(4) The Commissioner may require that person to provide any fur¬ther evidence that the Commissioner thinks fit.
Section 41C: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41D Commissioner’s consideration of whether prima facie case has been made out for restoration
(1) The Commissioner must, after considering a request made in accordance with sections 41A to 41C, give the person who made the request a reasonable opportunity to be heard if the Commissioner is not satisfied that a prima facie case has been made out for an order under section 41A. (2) The Commissioner must publish a request made in accordance with sections 41A to 41C in the Journal if the Commissioner is satisfied that a prima facie case has been made out for an order under section 41A.
Section 41D: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41E Notice of opposition and reasonable opportunity to be heard
(1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 41A on either or both of the following grounds:
(a) that the relevant failure to comply with section 12(2) was not unintentional:
(b) if the period within which a request for an order under section 41A may be made is extended under section 41C, that the delay in making the request was undue.
(2) The Commissioner must notify the person who made the re¬quest if a person has given notice under subsection (1) and provide the person who made the request with a copy of that notice.
(3) The Commissioner must give the person who made the request and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Section 41E: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41F Order to be made on payment of unpaid fees
(1) If the Commissioner has published a request under section 41D, he or she must make an order under section 41A in ac¬cordance with the request after the prescribed period for giving notice of opposition if—
(a) all unpaid prescribed fees are paid; and
(b) all other prescribed additional penalties (if any) are paid; and
(c) either—
(i) no notice of opposition is given within the pre¬scribed period; or
(ii) the decision of the Commissioner is in favour of the person who made the request (in the case of a notice of opposition having been given within the prescribed period).
(2) An order for the extension of the period of copyright in a regis¬tered design—
(a) may be made subject to a condition requiring the regis¬tration of any matter if the provisions of this Act con¬cerning entries in the register of designs have not been complied with; and
(b) must contain, or be subject to, the provisions that are prescribed for the protection or compensation of per¬sons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the design between the date when the period of copyright ended and the date on which the request is published under section 41D; and
(c) may be made subject to any other conditions that the Commissioner thinks fit.
(3) If any condition of an order under this section is not complied with by the registered proprietor, the Commissioner may re¬voke the order and give any directions that are consequential on the revocation that the Commissioner thinks fit.
(4) The Commissioner must, before the Commissioner makes a decision under subsection (3), give the registered proprietor a reasonable opportunity to be heard.
Section 41F: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
Restoration of design applications
Heading: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41G Request for restoration of abandoned design application
(1) This section applies if an application for the registration of a design is abandoned under section 7(4).
(2) The applicant may make a request to the Commissioner in the prescribed manner for an order to restore the application and to extend the period for complying with the requirements im¬posed on the applicant by or under this Act to a date that is specified in the order.
(3) Every request for an order must contain a statement that fully sets out the circumstances that led to the abandonment under section 7(4).
(4) The Commissioner must, after considering a request, give the person who made the request a reasonable opportunity to be heard if the Commissioner is not satisfied that the default or neglect on the part of the applicant that resulted in the appli¬cation being abandoned under section 7(4) was unintentional.
(5) The Commissioner must publish the request in the Journal if the Commissioner is satisfied that the default or neglect on the part of the applicant that resulted in the application being abandoned under section 7(4) was unintentional.
(6) An appeal to the Court may be made from any decision of the Commissioner under this section or sections 41H to 41J.
Section 41G: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41H When request for restoration of application may be made
(1) A request under section 41G may only be made within the prescribed period.
(2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satis¬fied that there was no undue delay in making the request.
(3) The applicant must, for the purposes of subsection (2), pro¬vide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.
(4) The Commissioner may require the applicant to provide any further evidence that the Commissioner thinks fit.
Section 41H: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41I Notice of opposition
(1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 41J on either or both of the following grounds:
(a) that the default or neglect on the part of the applicant that resulted in the application being abandoned under section 7(4) was not unintentional:
(b) if the period within which a request under section 41G may be made is extended under section 41H, that the delay in making the request was undue.
(2) The Commissioner must notify the applicant if a person has given notice under subsection (1) and provide the applicant with a copy of that notice.
(3) The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Section 41I: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
41J Commissioner to determine matter
(1) The Commissioner must, after the expiry of the prescribed period for giving notice of opposition under section 41I,—
(a) by order restore the application and extend the period for complying with the requirements imposed on the ap¬plicant by or under this Act to a period that is specified in the order if the Commissioner is satisfied that—
(i) the default or neglect on the part of the applicant that resulted in the application being abandoned under section 7(4) was unintentional; and
(ii) if the period within which a request under section 41G may be made was extended under section 41H, there was no undue delay in making the request; or
(b) dismiss the request.
(2) An order under this section must contain, or be subject to, the provisions that are prescribed for the protection or compensa¬tion of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the de¬sign between the date when the application became abandoned
and the date on which the request is published under section 41G.
(3) The Commissioner must publish in the Journal the making of an order under subsection (1) after that order is made.
Section 41J: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
Offences
42 Offences in respect of designs required to be kept secret
(1) Every person who fails to comply with any direction given under section 9, or who makes or causes to be made an ap¬plication for the registration of a design in contravention of that section, commits an offence and shall be liable on convic¬tion on indictment to imprisonment for a term not exceeding 2 years or to a fine not exceeding $1,000, or to both such im¬prisonment and such fine.
(2) Where an offence against section 9 is committed by a body corporate, every person who at the time of the commission of the offence is a director, general manager, secretary, or other similar officer of the body corporate, or is purporting to act in any such capacity, shall be deemed to have committed that offence unless he proves that the offence was committed by the body corporate without his consent or connivance and that he exercised all such diligence to prevent the commission of the offence by the body corporate as he ought to have exercised having regard to the nature of his functions in that capacity and to all the circumstances.
(3) [Repealed]
Compare: Registered Designs Act 1949, s 33 (UK)
Section 42(3): repealed by section 214(1) of the Summary Proceedings Act 1957.
43 Falsification of register, etc
(1) Every person who makes or causes to be made a false entry in the register of designs, or a writing falsely purporting to be a copy of an entry in that register, or produces or tenders or causes to be produced or tendered in evidence any such writ¬ing, knowing the entry or writing to be false, commits an of¬fence and shall be liable on conviction on indictment to im¬prisonment for a term not exceeding 2 years.
(2) [Repealed]
Compare: Registered Designs Act 1949, s 34 (UK); 1921-22 No 18 s 143(1)
Section 42(2): repealed, by section 214(1) of the Summary Proceedings Act 1957.
44 Fine for falsely representing a design as registered
(1) Every person who falsely represents that a design applied to any article sold by him is registered in New Zealand in re¬spect of that article commits an offence and shall be liable on summary conviction to a fine not exceeding $40; and for the purposes of this provision a person who sells an article having stamped, engraved, or impressed thereon or otherwise applied thereto the words “registered in New Zealand” or any other words expressing or implying that the design applied to the article is registered in New Zealand shall be deemed to repre¬sent that the design applied to the article is registered in respect of that article.
(2) Every person who, after the copyright in a registered design has expired, marks any article to which the design has been applied with the words “registered in New Zealand” or any word or words implying that there is subsisting copyright in the design in New Zealand or causes any such article to be so marked commits an offence and shall be liable on summary conviction to a fine not exceeding $40.
Compare: Registered Designs Act 1949, s 35 (UK); 1921-22 No 18 s 143(3), (4)
Supplemental
45 Hours of business
(1) The Commissioner, from time to time by notice in the Journal, may fix the hours during which the Patent Office shall be open for the transaction of public business under this Act, and may declare the Patent Office closed for the transaction of public business on any day.
(2) Where the time prescribed for doing any act or taking any pro-ceeding expires on a day on which the Patent Office is not open and by reason thereof the act or proceeding cannot be done or taken on that day, the act or proceeding shall be deemed to be in time if done or taken on the next day on which the Patent Office is open.
Compare: Registered Designs Act 1949, s 39 (UK); 1921-22 No 18 s 133
Section 45(1): substituted, on 10 December 1976, by section 2(1) of the Designs Amendment Act 1976 (1976 No 86).
Section 45(2): amended, on 10 December 1976, by section 2(2) of the Designs Amendment Act 1976 (1976 No 86).
45A Closing of Patent Office at short notice
(1) Notwithstanding subsection (1) of section 45, where, because of an emergency or other temporary circumstances, the Com¬missioner is satisfied that it is or will be necessary or desirable to close the Patent Office on any day and it is not practicable to give notice of the closure in the Journal as required by that subsection, the Commissioner may, without giving that notice, declare the Patent Office closed for the transaction of public business on that day in accordance with the provisions of this section.
(2) In every case where the Commissioner proposes to declare or has declared the Patent Office closed under subsection (1) he shall, if practicable, display a public notice of that fact in or on the building in which the Patent Office is situated.
(3) As soon as practicable thereafter the Commissioner shall also cause a copy of the public notice, or (if no such notice was displayed) a notice of the exercise of his powers under this section, to be published in the Journal.
Section 45A: inserted, on 10 December 1976, by section 3 of the Designs Amendment Act 1976 (1976 No 86).
46 Regulations
(1) Subject to the provisions of this Act, the Governor-General may from time to time, by Order in Council, make all such regulations as may in his opinion be necessary or expedient for giving effect to the provisions of this Act and for the due administration thereof.
(2) Without limiting the general power conferred by subsection (1), it is hereby declared that regulations may be made under this section for all or any of the following purposes:
(a) for regulating the business of the Patent Office in rela¬tion to designs:
(b) for regulating all matters by this Act placed under the direction or control of the Commissioner:
(c) for prescribing the form of applications for registration of designs and of any representations or specimens of designs or other documents which may be filed at the Patent Office, and for requiring copies to be furnished of any such representations, specimens, or documents:
(ca) for prescribing the manner in which applications may be made under section 12(2):
(cb) for regulating the procedure to be followed in connec¬tion with a request to the Commissioner under sections 41A to 41F (including providing for when and how re¬quests must be made, the period for giving notice of op¬position, penalties payable under section 41F, and the matters referred to in section 41F(2)(b)):
(cc) for regulating the procedure to be followed in connec¬tion with a request to the Commissioner under sections 41Gto 41J (including providing for when and how re¬quests must be made, the period for giving notice of op¬position, and the matters referred to in section 41J(2)):
(d) for regulating the procedure to be followed in connec¬tion with any application or request to the Commis¬sioner or in connection with any proceeding before the Commissioner and for authorising the rectification of ir¬regularities of procedure:
(e) for regulating the keeping of the register of designs:
(f) for authorising the publication and sale of copies of representations of designs and other documents in the Patent Office:
(g) for prescribing classes of persons whom the Commis¬sioner may refuse to recognise as agents in respect of proceedings under this Act:
(h) for prescribing matters to be published in the Patent Of¬fice Journal:
(i) for prescribing anything authorised or required by this Act to be prescribed by regulations.
(3) [Repealed]
Compare: Registered Designs Act 1949, s 36 (UK); 1921-22 No 18 s 138
Section 46(2)(ca): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15).
Section 46(2)(cb): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15).
Section 46(2)(cc): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15).
Section 46(3): repealed, on 19 December 1989, by section 11 of the Regulations (Disallowance) Act 1989 (1989 No 143).
47 Fees
(1) There shall be paid in respect of the registration of designs and applications therefor, and in respect of other matters relating to designs arising under this Act, such fees as may from time to time be prescribed by regulations made under this Act, and all such fees shall be paid into a Departmental Bank Account.
(2) Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by the regulations made under this Act, may be refunded by the Commissioner, and all money so refunded shall be paid out of public money without further appropriation than this Act.
Compare: Registered Designs Act 1949, s 40 (UK); 1921-22 No 18 s 117
Section 47(1): amended, on 1 April 1964, pursuant to section 4(4) of the Public Revenues Amendment Act 1963 (1963 No 46).
Section 47(2): amended, on 1 April 1964, pursuant to section 4(4) of the Public Revenues Amendment Act 1963 (1963 No 46).
48 Service of notices, etc, by post
(1) Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made, or filed by sending it by post in a letter addressed to the person concerned at his usual or last known address.
(2) Where any notice is sent by the Commissioner to any person by post as aforesaid, the notice shall be deemed to have been given at the time when the letter containing it would have been delivered in the ordinary course of post.
Compare: Registered Designs Act 1949, s 41 (UK); 1921-22 No 18 s 132
49 Annual report
The Commissioner of Patents shall, in his annual report with respect to the operation of the Patents Act 1953, include a re¬port with respect to the operation of this Act as if it formed part of or was included in that Act.
Compare: Registered Designs Act 1949, s 42 (UK); 1921-22 No 18 s 128
50 Application of Act to Tokelau
This Act shall be in force in Tokelau.
Section 50: amended, on 9 December 1976, pursuant to section 3(8) of the Tokelau Amendment Act 1976 (1976 No 122).
51 Saving
Nothing in this Act shall be construed as authorising or requir¬ing the Commissioner to register a design the use of which would, in his opinion, be contrary to law or morality.
Compare: Registered Designs Act 1949, s 43(1) (UK); 1939 No 26 s 71
52 Repeals and savings
(1) The enactments specified in the Schedule to this Act are hereby repealed.
(2) Without limiting the provisions of the Acts Interpretation Act 1924, it is hereby declared that the repeal of any provision by this Act shall not affect any document made or any thing whatsoever done under the provision so repealed or under any corresponding former provision, and every such document or thing, so far as it is subsisting or in force at the time of the repeal and could have been made or done under this Act, shall continue and have effect as if it had been made or done under the corresponding provision of this Act and as if that provision had been in force when the document was made or the thing was done.
(3) Any design registered before the commencement of this Act shall be deemed to be registered under this Act in respect of articles of the class in which it is registered.
(4) Where, in relation to any design, the time for giving notice to the Commissioner under section 63 of the Patents, Designs, and Trade Marks Act 1921-22 expired before the commence¬ment of this Act and the notice was not given, subsection (2)
of section 10 of this Act shall not apply in relation to that de¬sign or any registration of that design. (5) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.
Compare: Registered Designs Act 1949, s 48 (UK)
Schedule s 52(1)
Enactments repealed
Patents, Designs, and Trade Marks Act 1921-22 (1921-22 No 18)
Amendment(s) incorporated in the Act(s)
Patents, Designs, and Trade Marks Amendment Act 1939 (1939 No 26)
Amendment(s) incorporated in the Act(s)
Patents, Designs, and Trade Marks Amendment Act 1943 (1943 No 6)
Amendment(s) incorporated in the Act(s)
Patents, Designs, and Trade Marks Amendment Act 1946 (1946 No 32)
Amendment(s) incorporated in the Act(s)
Patents, Designs, and Trade Marks Amendment Act 1947 (1947 No 37)
Amendment(s) incorporated in the Act(s)
Contents
1 General
2 About this eprint
3 List of amendments incorporated in this eprint (most recent first)
Notes
1 General
This is an eprint of the Designs Act 1953. The eprint incorporates all the amendments to the Act as at 19 April 2011. The list of amendments at the end of these notes specifies all the amendments incorporated into this eprint since 3 September 2007.
Relevant provisions of any amending enactments that contain transitional, savings, or application provisions that cannot be compiled in the eprint are also included, after the principal enactment, in chronological order.
2 About this eprint
This eprint has not been officialised. For more information about eprints and officialisation, please see http://www.pco.parliament.govt.nz/eprints/.
3 List of amendments incorporated in this eprint (most recent first)
Designs Amendment Act 2010 (2010 No 15)