REGISTERED DESIGNS

Registered Design Infringement Lawyer | Alex McDonald | intellectual Property Lawyer


Registered Design Infringement LawyerA business which owns copyright in product designs can obtain registration for t
he designs under the Designs Act 1953. Registration gives the owner benefits over and above copyright protection. The main benefit is that a registered design is infringed whether or not the infringer has copied the original design. A copyright owner does not need to prove copying. Just that the infringer has made a product which is not substantially different from the registered design. Independent creation of substantially the same design will infringe the registered design.

Registered designs protect a wide range of industrial products and patterns including such things as furniture, children’s toys, industrial pumps, toilet pan connectors, cattle pens, a golf club head, wall paper, patterns, tyre treads, typefaces, confectionary, paving stones, detergent tablets, computer screen icons.

A registered design is only available for products that are “new”. The application for registration needs to be filed before the product is released to the market. It is not necessary that the design be entirely new or original but it must be substantially new or original.

The dilemma for the copyright owner is that it might have any number of designs it produces over its life time. It doesn’t know until it gets to market which ones are the really successful ones. In order to get registered design protection it needs to decide before the products go to market which ones are the designs that are worth the cost of obtaining that protection.

To prove copyright infringement, the copyright owner has to establish that the infringement is due to copying. That is that the infringer had access to the copied product and that the design of the infringing product is derived from of the copyright work.

Registered designs last for 15 years. They are territorial and have to pursued in each country for which protection is sought.

A registered design must include representations of the design and a statement of novelty.

There is no opposition procedure for registered designs.

Lapsed Registered Designs

Section 74 Copyright Act 1994 is a trap for young players. If a registered design is allowed to lapse, competitors are free to copy from the registered design drawings but not from any other source without infringing copyright. A competitor can avoid copyright infringement by simply copying from the lapsed registered design drawings. Similar issues arise with regard to copying from the drawings of lapsed patents.

Remedies

Under s 13 of the Designs Act 1953 a defendant who proves that, at the date of infringement, he or she was not aware, and had no reasonable grounds for supposing, there was a relevant registered design may be considered an innocent infringer. Neither damages nor an account of profits can be awarded against an innocent infringer.

However, an injunction preventing further infringement of the design registration can still be obtained against an innocent infringer.

A defendant cannot be said to be an innocent infringer if the article that is the subject of a registered design is marked with the words “registered design” (or any abbreviation or variant) and “New Zealand” or “NZ” (followed by the number of the registered design).

REGISTERED DESIGNS

Registered Design Infringement LawyerRegistered Design Infringement Lawyer | Alex McDonald | intellectual Property Lawyer

A business which owns copyright in product designs can obtain registration for the designs under the Designs Act 1953. Registration gives the owner benefits over and above copyright protection. The main benefit is that a registered design is infringed whether or not the infringer has copied the original design. A copyright owner does not need to prove copying. Just that the infringer has made a product which is not substantially different from the registered design. Independent creation of substantially the same design will infringe the registered design.

Registered designs protect a wide range of industrial products and patterns including such things as furniture, children’s toys, industrial pumps, toilet pan connectors, cattle pens, a golf club head, wall paper, patterns, tyre treads, typefaces, confectionary, paving stones, detergent tablets, computer screen icons.

A registered design is only available for products that are “new”. The application for registration needs to be filed before the product is released to the market. It is not necessary that the design be entirely new or original but it must be substantially new or original.

The dilemma for the copyright owner is that it might have any number of designs it produces over its life time. It doesn’t know until it gets to market which ones are the really successful ones. In order to get registered design protection it needs to decide before the products go to market which ones are the designs that are worth the cost of obtaining that protection.

To prove copyright infringement, the copyright owner has to establish that the infringement is due to copying. That is that the infringer had access to the copied product and that the design of the infringing product is derived from of the copyright work.

Registered designs last for 15 years. They are territorial and have to pursued in each country for which protection is sought.

A registered design must include representations of the design and a statement of novelty.

There is no opposition procedure for registered designs.

Lapsed Registered Designs

Section 74 Copyright Act 1994 is a trap for young players. If a registered design is allowed to lapse, competitors are free to copy from the registered design drawings but not from any other source without infringing copyright. A competitor can avoid copyright infringement by simply copying from the lapsed registered design drawings. Similar issues arise with regard to copying from the drawings of lapsed patents.

Remedies

Under s 13 of the Designs Act 1953 a defendant who proves that, at the date of infringement, he or she was not aware, and had no reasonable grounds for supposing, there was a relevant registered design may be considered an innocent infringer. Neither damages nor an account of profits can be awarded against an innocent infringer.

However, an injunction preventing further infringement of the design registration can still be obtained against an innocent infringer.

A defendant cannot be said to be an innocent infringer if the article that is the subject of a registered design is marked with the words “registered design” (or any abbreviation or variant) and “New Zealand” or “NZ” (followed by the number of the registered design).