How we can help with design registrations

A registered design protects the shape or appearance of a product and is used to deter others from copying it. If you have spent time and money creating a new design or product, a design registration can help you prevent competitors from unfairly taking advantage of those efforts.

Typically the look of a product can be a key influencer in a purchasing decision. The owner of a design registration is granted a monopoly to manufacture, sell, license, import, and use articles embodying the protected design in New Zealand for up to 15 years.

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

The penalties for infringement of a registered design are substantial and can include damages, an account of profits, litigation costs, delivery up of infringing articles and surrender of machinery used to make them. Generally, litigation is not necessary to prevent infringement of a registered design. The existence of a design registration can be sufficient to deter competitors from copying and adequate marking will warn them of the existence of proprietary rights in the design.

The rights conferred by a design registration can be sold or licensed. Manufacturers are often reluctant to enter into a licensing agreement unless an application to register the design has been filed. The existence of a design registration will ensure their investment will not be unfairly diminished by competitors. Design registrations may also be a useful tool for preventing parallel imports.

Misappropriation of a new design is less likely if an application is filed before approaching potential manufacturers and investors.
What can be registered?

Registrable designs include designs which are not purely functional and which have not been previously applied to any manufactured article.
There are a few articles specifically exempt from design registration.

For a design to be registrable it must be novel. It is therefore important to avoid disclosure of the design before a design application is filed. Non-confidential disclosure includes such things as offers for sale, advertising, use or display of the article. There are some exceptions and we can advise whether these apply to you.

A design registration should protect the design of a product in the form in which it is marketed. Therefore you should not file a design application until you have developed the design of the article to a stage where it is ready for production and marketing.

In some circumstances a single design application can be used to gain protection for more than one product.