Designs Regulations 1954 (reprint as at 3 September 2007), New Zealand

Contents

Page

Part 1 Preliminary

Title, commencement, and arrangement Interpretation

Part 2 Fees

Fees payable according to Schedule 1 Time of payment Form of payment Payments by post Payments from beyond New Zealand Notice of fees due

Part 3 Forms and documents

Forms prescribed in Schedule 2 Size, etc, of documents Signature of documents by firms and bodies corporate

Part 4 Agency and correspondence

Note These regulations are administered in the Department of Justice.

Agents may act for applicants Authorization of agent Service upon agent Refusal to recognize agent Addressing of correspondence Personal signature may be required Address for service

Part 5 Applications for registration

Signature of application Appropriate application forms to be used Death of applicant Separate applications for same design for more than one

article Name of article and novel features of design to be stated Applications under section 8

Part 6 Representations

Representation of design to be furnished Sets of articles Preparation Specimens Words, letters, or numerals Repeating surface patterns Portraits, insignia, etc. Name or portrait of living person Excluded designs

Part 7 Convention applications

Requirements Procedure

Part 8 Procedure on receipt of application

Objection by Commissioner Hearing Appeal Noncompletion Registration

Part 9 Extension of period of copyright

Second period Third period Designs registered under section 8 Extension of time for payment

Part 10 Assignments, etc.

Registration Copies of documents Particulars required of person claiming Cessation of interest Alteration of entries Cancellation of registration Administration dispensed with in certain cases

Part 11 Correction of errors

Application Advertisement Opposition Hearing

Part 12 Certificates and information

Certificate by Commissioner Further certificate of registration Request for information Request for search Designs not open to public inspection

Part 13 Compulsory licence

Application Opposition Evidence in support of application Evidence in answer Evidence closed Hearing Costs

Part 14 Cancellation of registration

Application Procedure Costs

Part 15 Evidence before the Commissioner

Form of evidence Preparation of declarations, etc. Making of declaration, etc. Recognition of signatures on documents Further evidence

Part 16 Applications to and orders of Court

Service of copy of application on Commissioner Action consequent upon Court order

Part 17 Miscellaneous provisions

Designs excluded from the application of the Copyright Act 1913 Discretionary power Power to dispense with evidence Amendments Extension of time Destruction of records

Part 18 Revocations and savings

Revocations and savings

Schedule 1 28 Fees

Schedule 2 29 Forms

Schedule 3 48 Regulations revoked

Part 1 Preliminary

Title, commencement, and arrangement

1

(1)

These regulations may be cited as the Designs Regulations 1954.

(2)

These regulations shall come into force immediately after the commencement of the Designs Act 1953.

(3)

These regulations are arranged as follows:

Interpretation

2

In these regulations, unless the contextotherwise requires,— The Act means the Designs Act 1953 Agent means an agent duly authorized to the satisfaction of

the Commissioner Commonwealth country means a country that is a member of the British Commonwealth of Nations; and includes every

territory for whose international relations the Government of that country is responsible Convention application means an application in New

Zealand under section 21 of the Act Lodged means given, made, or filed, or sent through the post byaprepaidletteraddressedtotheCommissioneratthePatent Office

Registermeanstheregisterofdesignskeptundersection 25 of the Act

Specimen means an article with the design applied to it Textile article means textile piece goods, handkerchiefs, and shawls;andincludessuchotherclassesofarticlesofasimilar character asthe Commissioner may from time totime decide

Areferencetoanumberedformisareferencetothedesignsformso

numbered in Schedule 2 to these regulations.

Part 2 Fees

Fees payable according to Schedule 1

3

(1)

Thefeestobepaidinrespectoftheregistrationofdesignsand applications therefor and in respect of other matters relating to designs arising under the Act shall be those prescribed in Schedule 1 hereto.

(2)

Thefeesprescribedbytheseregulationsareexclusiveofgoods and services tax. Subclause(2)wasinserted,asfrom1July1999,byregulation 2 DesignAmend

ment Regulations 1999 (SR 1999/155).

Time of payment

4

Fees and charges payable to the Patent Office shall be paid at the time of making an application or request or upon giving notice or filing any instrument in respect of which a fee or charge is payable under these regulations.

Form of payment

5

All fees shall be paid in cash at the Patent Office. The Commissioner may, however, accept payments made in any other form, but in such case he may delay or cancel the credit until collection is made.

Payments by post

6

Money sent by mail to the Patent Office shall be at the risk of the sender.

Payments from beyond New Zealand

7

Remittances from beyond New Zealand shall be payable and immediatelynegotiableinNewZealandforthefullamountof the prescribed fee.

Notice of fees due

8

The Commissioner may give notice of any fee due or becoming due, but no liability shall be incurred by him if he fails to do so, or if for any reason the notice, if given, is incorrect in any particular or fails to reach the person for whom it is intended.

Part 3 Forms and documents

Forms prescribed in Schedule 2

9

TheformssetoutinSchedule 2 heretoshallbeusedinallcases towhichtheyareapplicable,andmaybemodifiedasdirected by the Commissioner.

Size, etc, of documents

10

Subject to any directions that may be given by the Commis sioner in any particular case, all applications, notices, papers having representations affixed, and other documents lodged under the Act or these regulations shall be upon strong paper, and, except where otherwise required, on one side only, ap proximatelyA4internationalsize,andhavingonthelefthand part thereof a margin of approximately 5cm. Regulation 10 was amended, as from 27 March 1975, by regulation 2(1)(a)

DesignsRegulations1954,AmendmentNo2(SR1975/54),bysubstitutingthe expression “approximately A4 international size” for the expression “a size approximately 13 in by 8 in”.

Regulation 10 was amended, as from 27 March 1975, by regulation 2(1)(b) DesignsRegulations1954,AmendmentNo2(SR1975/54),bysubstitutingthe expression“5cm”for the expression “2 in”.

Signature of documents by firms and bodies

corporate

11

(1)

A document lodged by a firm shall contain the names of the partners in full and shall be signed by all the partners or by any partner stating that he signs on behalf of the partnership orbyanyotherpersonwhosatisfiestheCommissionerthathe is authorized to sign the document.

(2)

A document lodged by a body corporate shall be signed by a director or by the secretary of the body corporate or by any other person who satisfies the Commissioner that he is authorized to sign the document.

Part 4 Agency and correspondence

Agents may act for applicants

12

An application for registration and all other communications betweenanapplicant and the Commissioner,andbetween the registeredproprietorofadesignandtheCommissionerorany other person, may be made by or through an agent.

Authorization of agent

13

Anysuchapplicant,registeredproprietor,orotherpersonmay appointan agent torepresenthiminanyproceedingormatter bysigningandlodgingwiththeCommissioneranauthorityin writing to that effect in form 1, or in such other form as the Commissioner may deem sufficient.

Service upon agent

14

Incaseofanysuchappointment,serviceupontheagentofany documentrelatingtotheproceedingormattershallbedeemed tobeserviceuponthepersonsoappointinghim, andall communications directed to be made to that person in respect of theproceedingormattermaybeaddressedtotheagentandall attendances upon the Commissioner relating thereto may be made by or through the agent.

Refusal to recognize agent

15

TheCommissionershallrefusetorecognizeasagentinrespect ofanyproceedingsundertheActapersonwhoneitherresides nor carries on business in New Zealand.

Addressing of correspondence

16

All letters and other communications intended for the Patent OfficeandrelatingtomattersarisingundertheActshallbeaddressed to the Commissioner of Designs, Patent Office, Wellington C 1.

Personal signature may be required

17

In any particular case the Commissioner may, if he thinks fit, require the personal signature or presence of an applicant or other person.

Address for service

18

(1)

Everyapplicantinanyproceedingstowhichtheseregulations relate, and every person registered as proprietor of, or as havinganinterestin,aregistereddesign,shallfurnishtotheCommissioner, in addition to his full residential or business address, an address for service in New Zealand.

(2)

The address for service may be treated, for all purposes connected with the proceedings or design, as the actual address oftheapplicantorpersonandshall,inthecaseofaregistered proprietor,beenteredontheregisterastheaddressforservice of the proprietor.

(3)

Any written communication addressed to an applicant in any proceedings, or to any person registered as proprietor of or as having an interest in a registered design, at his address for service shall be deemed to be properly addressed.

(4)

Where an address for service has not been furnished to the Commissioner, the Commissioner may treat the residential or businessaddressastheaddressforservice,unlesstheresidential or business address is out of New Zealand, in which case the Commissioner need not proceed with the examination of

9

theapplicationuntilanaddressforserviceinNewZealandhas been furnished to him.

Part 5 Applications for registration

Signature of application

19

An application for registration of a design shall be signed by the applicant for registration or by his agent.

Appropriate application forms to be used

20

Anapplicationforregistrationofadesignshallbeinform 2 or form 3 ,orinthecaseofadesigntobeappliedtoasetofarticles in form 4 or form 5, as the case may be.

Death of applicant

21

Incaseofthedeathofanyapplicantfortheregistrationofadesignafterthedateofhisapplicationandbeforeregistrationof thedesignhasbeeneffected,theCommissionermay,onbeing satisfiedoftheapplicant’sdeath, enterintheregister, inplace of the name, address, and nationality of the deceased applicant, the name, address, and nationality of the person owning the design on that ownership being proved to the satisfaction of the Commissioner.

Separate applications for same design for morethan one article

22

Where it is desired to register the same design in respect of more than one article, a separate application shall be made in respect of each article. In that case each application shall be numbered separately, and shall be treated as a separate and distinct application.

Name of article and novel features of design tobe stated

23

(1)

Every application shall state the article to which the design is tobeapplied,andthattheapplicantclaimstobetheproprietor thereof.

(2)

Except in the case of an application to register a design to be appliedtoatextilearticle,towallpaper,ortolace,theapplicationshallfurtherbeaccompaniedbyastatementofthefeatures of the design for which novelty is claimed.

(3)

The applicant shall, if required by the Commissioner in any casesotodo, endorseoneachoftherepresentations or specimensastatementsatisfactorytotheCommissionerofthenovelty claimed for the design.

Applications under section 8

24

If the application is for the registration of a design which has already been registered in respect of one or more articles, or consistsofaregistereddesignwithmodificationsorvariations not sufficient to alter the character or substantially to affect the identity thereof, and it is desired to claim the protection of section 8 of the Act for the application, it shall contain the numberornumbersofthe registrationorregistrations already effected.

Part 6 Representations

Representation of design to be furnished

25

Thereshallbefurnishedinconnectionwithanapplicationfor the registration of a design four identical representations of thedesign,inaformsatisfactorytotheCommissioner,orfour specimens. Where representations are supplied, the Commissioner may at any time before registration require specimens or additional representations.

Sets of articles

26

(1)

Thereshallbefurnishedinconnectionwithanapplicationfor theregistrationofadesigntobeappliedtoasetofarticlesfour identicalrepresentationsofthedesigninaformsatisfactoryto the Commissioner, or four specimens.

(2)

The representations shall show the design as applied to each different article included in the set.

Preparation

27

(1)

Each representation of the design, whether to be applied to a single article or to a set of articles, shall be upon paper of the size prescribed by regulation 10 hereof and not on card board, and shall appear on one side only of the paper. The figure or figures shall be placed in an upright position on the sheet. When more figures than one are shown, these shall, where possible, be on one and the same sheet, and each shall bedesignatedperspectiveview,frontview,sideview,plan,or otherwise, as the case may be.

(2)

When the representations furnished are drawings or tracings, they shall be in ink and, if on tracing cloth or tracing paper, shallbemountedonpaperofthesizeprescribedbyregulation 10 hereof.

(3)

Notwithstanding the foregoing provisions of this regulation, theCommissionermayacceptphotographicrepresentationsof the design in such form as he may think fit.

Specimens

28

When specimens are furnished and are not, in the Commissioner’sopinion,ofakindwhichcanbeconvenientlymounted in a flat position by means of an adhesive upon paper or by stitchingonlinenbackedsheetsofpaperofthesizeprescribed by regulation 10 hereof and stored without damage to other documents, representationsshall befurnished inplaceofspecimens.

Words, letters, or numerals

29

Wherewords,letters,ornumeralsappearinthedesignbutare notoftheessenceofthedesign,theyshallberemovedfromthe representations or specimens. Where they are of the essence of the design, the Commissioner may require the insertion of a disclaimer of any right to their exclusive use.

Repeating surface patterns

30

Each representation of a design which consists of a repeating surfacepatternshallshowthecompletepatternandasufficient portion of the repeat in length and width, and shall not be of less size than 17cm by 12cm. Regulation 30 was amended, as from 27 March 1975, by regulation 2(2) De

signs Regulations 1954, Amendment No 2 (SR 1975/54), by substituting the expression“17cm by 12cm”for the expression “7 in by 12cm”.

Portraits, insignia, etc.

31

WhereaportraitofHerMajestyorofanymemberoftheRoyal Family, or a reproduction of the armorial bearings, insignia, orders of chivalry, decorations, or flags of any country, city, borough, town, place, society, body corporate, institution, or person, appears on a design, the Commissioner, before proceeding to register the design, shall, if he so requires, be furnishedwithaconsenttotheregistrationanduseoftheportrait or reproduction from such official or other person as appears tothe Commissioner to be entitled to give consent,and in default of such consent he may refuse to register the design.

Name or portrait of living person

32

Wherethenameorportraitofalivingpersonappearsonadesign, the Commissioner shall be furnished, if he so requires, withconsentfromthepersonbeforeproceedingtoregisterthe design. In the case of a person recently dead, the Commissioner may call for consent from his legal representative beforeproceedingwiththeregistrationofa designonwhich the name or portrait of the deceased person appears.

Excluded designs

33

There shall be excluded from registration under the Act designs to be applied to any of the following articles, namely:

(a)

Works of sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process:

(b)

Wall plaques and medals:

(c)

Printed matter primarily of a literary or artistic character, including bookjackets, calendars, certificates, coupons, dressmaking patterns, greetings cards, leaflets, maps, plans, postcards, stamps, trade advertisements, trade forms, and cards, transfers, and the like.

Part 7 Convention applications

Requirements

34

(1)

Anapplicationforregistrationundersection 21 oftheActshall containadeclarationthattheapplicationinaconventioncountryuponwhichtheapplicantreliesisthefirstapplicationmade in a convention country in respect of the design, whether by the applicant or by any person of whom he claims to be the legalrepresentativeorassignee,andshallspecifytheconvention country in which the foreign application was made, or is deemedundersection 21(4) oftheActtohavebeenmade,and the official date thereof.

(2)

In addition to the representations or specimens lodged with every convention application there shall be lodged with the application, or within three months thereafter, a copy of the representationofthedesignfiledordepositedinrespectofthe first application in a convention country, duly certified by the official chief or head of the Designs Office of the convention country, or otherwise verified to the satisfaction of the Commissioner.

(3)

Ifanycertificateorotherdocumentrelatingtotheapplication isinaforeignlanguage,atranslationthereofshallbeannexed

theretoandverifiedbystatutorydeclarationorotherwisetothe satisfaction of the Commissioner.

Procedure

35

Save as provided by regulation 34 hereof, all proceedings in connectionwithaconventionapplicationshallbetakenwithin the times and in the manner prescribed by these regulations.

Part 8 Procedure on receipt of application

Objection by Commissioner

36

IfuponconsiderationoftheapplicationitappearstotheCommissioner that the design is not registerable under the Act, he shallstatehisobjectionstotheapplicantinwriting,andunless withinonemonththereaftertheapplicantappliesforahearing, the applicant shall be deemed to have withdrawn his application.

Hearing

37

Iftheapplicantappliesforahearing,thedecisionoftheCommissioner at the hearing shall be communicated to the applicant in writing.

Appeal

38

IftheapplicantdesirestoappealfromtheCommissioner’sdecision, he shall, within one month from the date of the deci sion, apply to the Commissioner in form 6 requesting him to stateinwritingthegroundsof,andthematerialsusedbyhimin arrivingat,hisdecision. Uponreceiptofanysuchapplication, the Commissioner shall send to the applicant such statement asaforesaidinwriting,andthedatewhenthestatementissent shallbedeemedtobethedateoftheCommissioner’sdecision for the purpose of an appeal.

Noncompletion

39

The time prescribed for the purposes of section 7(4) of the Act, which relates to noncompletion of an application, shall be twelve months from the date of the application:

Provided that the application may be completed at any time after twelve months but within fifteen months of the date aforesaid if a request for an extension of time is made in form 7.

Registration

40

The certificate of registration of a design shall be in form 8, form 9 ,form 10 ,orform 11 ,whicheverisapplicable,andmay be modified as directed by the Commissioner.

Part 9 Extension of period of copyright

Second period

41

An application for extension of the period of copyright for a second period of five years shall be made in form 12.

Third period

42

An application for extension of the period of copyright for a third period of five years shall be made in form 13.

Designs registered under section 8

43

(1)

An application for extension of the period of copyright in a designregisteredbyvirtueofsection 8 oftheActshallbemade beforetheexpirationoftheperiodofcopyrightintheoriginal registereddesigncurrentatthedateoflodgingtheapplication under section 8 of the Act.

(2)

Where an application is made for registration of a design by virtue of section 8 of the Act, and the period of copyright in theoriginalregistereddesigncurrentatthedateoflodgingthe said application expires before the completion of that application, registration shall not be effected until the copyright in the original registered design has been extended for a further

periodandanapplicationhasbeenlodgedfortheextensionof the period of copyright in the design to be registered.

Extension of time for payment

44

A request for an extension of time for payment of any fee payable for an extension of the period of copyright shall be made in form 14.

Part 10 Assignments, etc.

Registration

45

(1)

An application for the registration of the title of any person becoming entitled by assignment, transmission, or operation oflawtoaregistereddesignortoashareinaregistereddesign, or becoming entitled as mortgagee, licensee, or otherwise to any interest in a registered design, shall be made,—

(a)

In the case of an application under section 27(1) of the Act, by the person becoming so entitled in form 15:

(b)

In the case of an application under section 27(2) of the Act, by the assignor, licensor, or other party conferring the interest in form 16.

(2)

Application may be made in form 17 for entry in the register of notification of any other document purporting to affect the proprietorship of a registered design.

Copies of documents

46

(1)

An official or certified copy of any instrument or other document which is referred to in an application under regulation 45 hereof and is a matter of record in New Zealand shall be produced to the Commissioner with the application.

(2)

Any other document so referred to shall, unless the Commissionerotherwisedirects,beproducedtohimwiththeapplication, anda certifiedcopy of any such document shall be filed.

Particulars required of person claiming

47

Anapplicationunderregulation 45(1) hereofshallcontainthe name,address,andnationalityofthepersonclaimingorstated to be entitled, together with full particulars of the instrument, if any, under which title is claimed or given.

Cessation of interest

48

Wherethenameofapersonisentered intheregisterasmortgagee or licensee, that person may, on making an application for the purpose in form 18, have a note entered in the register that he no longer claims to be mortgagee or licensee, as the case may be.

Alteration of entries

49

(1)

Anapplicationbytheregisteredproprietorofadesignforthe alterationofaname,nationality,address,oraddressforservice entered on the register in respect of his design shall be made in form 19 or form 20, as the case may be.

(2)

Before acting on a request to alter a name or nationality the Commissioner may require such proof of the alteration as he thinks fit.

(3)

If the Commissioner is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.

Cancellation of registration

50

Where the registered proprietor of a design desires to cancel his registration, he shall make the application in form 21.

Administration dispensed with in certain cases

51

An application under section 41 of the Act for leave to dis pense with the production of probate or letters of administra tion shall be made in form 22, and shall be supported by such evidence as may be required by the Commissioner.

Part 11 Correction of errors

Application

A request under section 29(3) of the Act for the correction of a mistake in the register, in any certificate of registration, or application for the registration of a design, or any document filed in pursuanceofsuch an application,orinproceedingsin connection with any design, shall be made in form 23.

Advertisement

53

Where the Commissioner requires notice of the nature of the proposed correction to be advertised, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Journal, and in such other manner (if any) as the Commissioner may direct.

Opposition

54

(1)

Any person may, at any time within one month from the date of the advertisement in the Journal, give notice to the Commissionerofoppositiontotheproposedcorrectioninform24.

(2)

Everysuchnoticeshallbeaccompaniedbyacopythereofand a statement (in duplicate) setting out fully the nature of the opponent’sinterest,thefactsonwhichherelies,andtherelief which he seeks.

(3)

A copy of the notice and of the statement shall be sent by the Commissioner to the person making the request, and the Commissioner may give such directions (if any) as he may think fit with regard to the subsequent procedure.

Hearing

55

Where in accordance with section 29(4) of the Act a hearing isappointed,atleastfourteendays’noticeoftheappointment shall be given to the parties and to any other person to whom noticeoftheproposedcorrectionhasbeen givenbythe Commissioner.

Part 12 Certificates and information

Certificate by Commissioner

Where a certificate is required for the purpose of obtaining registrationofadesigninacountryoutsideNewZealandorof anylegalproceedingorotherspecialpurpose,astoanyentry, matter, or thing which the Commissioner is authorized by the Actortheseregulationstomakeordo,theCommissionermay, on the lodging of a request in form 25, give the certificate, whichshallalsospecifyonthefaceofitthepurposeforwhich it has been issued as aforesaid.

Further certificate of registration

57

An application under section 26(2) of the Act for a further certificateofregistrationshallbemadeinform26,andshallbe accompanied by evidence setting out in full and verifying the circumstances in which the original certificate of registration was lost or destroyed or cannot be produced.

Request for information

58

(1)

Where any person desires to obtain the information which he isentitledtoobtainundersection 31 oftheActandcanfurnish the registration number of the design, he shall apply in form 27,andtheCommissionershallthereafterfurnishhimwiththe information aforesaid.

(2)

Wheretheapplicantisunabletofurnishtheregistrationnumber of a design, he shall apply in form 28 and furnish to the Commissioner a representation or specimen (in duplicate) of the design applied to an article, and the Commissioner shall thereuponmakesuchsearchamongdesignsappliedtothearticlesasmaybepossible,andshallfurnishsuchinformationas can properly be given.

Request for search

59

The Commissioner shall, upon application for the purpose in form 29 ,accompaniedbyarepresentationorspecimen(induplicate) of a design applied to an article, cause a search to be madeamongregistereddesignsandstatewhetherthedesignas appliedtothatarticleappearstobeidenticalwith,orcloselyto resemble,anyregistereddesignappliedtothatarticleofwhich the copyright is still existing.