Designs Act 1953

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 Proclamation.
3: A Proclamation under this section is secondary legislation ( see Part 3 The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 1(2) this Act brought into force 1 January 1955 Designs Act Commencement Order 1954 Section 1(3) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
2: Interpretation
1: In this Act, unless the context otherwise requires,— article assignee Commissioner Commonwealth convention country section 20 copyright subsection (1) of section 11 court High design government department Journal section 206 Ministry prescribed proprietor section 6 registered proprietor set of articles
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 section 23 personal representative
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 country,— 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 convention country must be read as a reference to the governing body of the entity. 1921–22 No 18 s 2 Section 2(1) convention country replaced 14 October 1999 section 2(2) Designs Amendment Act 1999 Section 2(1) court amended 1 April 1980 section 12 Judicature Amendment Act 1979 Section 2(1) Journal replaced 13 September 2014 section 249 Patents Act 2013 Section 2(1) Ministry inserted 13 September 2014 section 249 Patents Act 2013 Section 2(5) inserted 14 October 1999 section 2(3) Designs Amendment Act 1999
3: Commissioner and Assistant Commissioners of Designs
1: The chief executive of the Ministry must appoint, under the Public Service Act 2020
a: the Commissioner of Designs; and
b: as many Assistant Commissioners of Designs as may be necessary for the purposes of this Act.
2: These persons are employees of the Ministry, and those appointments may be held separately or in conjunction with any other office in the Ministry. Section 3 replaced 13 September 2014 section 249 Patents Act 2013 Section 3(1) amended 7 August 2020 section 135 Public Service Act 2020
4: Powers of Assistant Commissioners of Designs
1: An Assistant Commissioner of Designs has the functions, duties, and powers of the Commissioner under this Act (other than the power to delegate under section 4A
2: The fact that an Assistant Commissioner exercises those functions, duties, and powers is conclusive evidence of the authority to do so. Section 4 replaced 13 September 2014 section 249 Patents Act 2013
4A: Power of Commissioner to delegate
1: The Commissioner may delegate to any person, either generally or particularly, any of the Commissioner’s functions, duties, and powers (except this power of delegation).
2: A delegation—
a: must be in writing; and
b: may be made subject to any restrictions and conditions that the Commissioner thinks fit; and
c: is revocable at any time, in writing; and
d: does not prevent the performance or exercise of a function, duty, or power by the Commissioner.
3: A person to whom any functions, duties, or powers are delegated may perform and exercise them in the same manner and with the same effect as if they had been conferred directly by this Act and not by delegation.
4: A person who appears to act under a delegation is presumed to be acting in accordance with its terms in the absence of evidence to the contrary.
5: Any reference in this Act or the regulations made under this Act to the Commissioner includes a reference to the delegate in respect of anything delegated to that person. Section 4A inserted 13 September 2014 section 249 Patents Act 2013
4B: Liability of Commissioner and others
The Commissioner, an Assistant Commissioner, or any other person acting on behalf of the Commissioner is not personally liable for any act or omission done in good faith in the performance or intended performance of the Commissioner's functions, duties, or powers. Section 4B inserted 13 September 2014 section 249 Patents Act 2013 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 registered 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 variants 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. 1921–22 No 18 ss 2, 52; Registered Designs Act 1949 s 1 (UK)
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 operation 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. 1921–22 No 18 s 52(1); Registered Designs Act 1949 s 2 (UK)
7: Proceedings for registration
1: An application for the registration of a design shall be made in the prescribed form and shall be filed with the Commissioner
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 registration of a design or may register the design in pursuance of the application without modification or subject to such modifications 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 prescribed 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 certificate of registration of the design under this Act is issued.
6: An appeal to the court shall lie from any decision of the Commissioner under subsection (3). 1921–22 No 18 s 52; Registered Designs Act 1949 s 3 (UK) Section 7(1) amended 13 September 2014 section 249 Patents Act 2013
8: Registration of same design in respect of other articles, etc
1: Where the registered proprietor of a design registered in respect of any article makes an application—
a: for registration, in respect of 1 or more other articles, of the registered design; or
b: for registration, in respect of the same or 1 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 design: 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 respect of the same or some other article with modifications 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 applicant 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. 1921–22 No 18 s 53; 1939 No 26 s 69; Registered Designs Act 1949 s 4 (UK)
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 directions for prohibiting or restricting the publication of information 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 by the public
3: Where the Commissioner gives any such directions as aforesaid, he shall give notice of the application and of the directions 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 New Zealand, and, unless a notice under paragraph (c) has previously been given by the Minister of Defence to the Commissioner, shall reconsider 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 design has been registered, inspect the representation or specimen of the design filed in pursuance of the application:
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 conditions, if any, as he thinks fit, extend the time for doing anything required or authorized to be done by or under this Act in connection with the application or registration, whether or not that time has previously expired.
4: No person resident in New Zealand shall, except under the authority of a written permit granted by or on behalf of the Commissioner, make or cause to be made any application outside New Zealand for the registration of a design of any class prescribed for the purposes of this subsection unless—
a: an application for registration of the same or substantially 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. Registered Designs Act 1949 s 5 (UK) Section 9(2) amended 13 September 2014 section 249 Patents Act 2013
10: Provisions as to confidential disclosure, etc
1: An application for the registration of a design shall not be refused, 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.
2: An application for the registration of a design shall not be refused 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
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 refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a government department or to any person authorized by a government department to consider the merits of the design, or of anything done in consequence of such a communication. 1921–22 No 18 ss 58, 63; Registered Designs Act 1949 s 6 (UK) Section 10(2)﻿(a) amended 2 September 1996 Designs Amendment Act 1996 Section 10(2)﻿(a) amended 12 November 1980 Shop Trading Hours Amendment Act 1980 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 registered 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 1921–22 No 18 ss 56(1), 66; Registered Designs Act 1949 s 7 (UK)
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
3: Subsection (2) is subject to sections 41A to 41F 1921–22 No 18 s 56; Registered Designs Act 1949 s 8 (UK) Section 12(2) replaced 20 October 1972 Designs Amendment Act 1972 Section 12(2) amended 19 April 2011 section 4(1) Designs Amendment Act 2010 Section 12(3) inserted 19 April 2011 section 4(2) Designs Amendment Act 2010
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 infringement he was not aware and had no reasonable ground for supposing 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 New Zealand NZ
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. 1921–22 No 18 s 38; Registered Designs Act 1949 s 9 (UK)
14: Compulsory licence in respect of registered design
1: At any time after a design has been registered any person interested may apply to the Commissioner for the grant of a compulsory 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 necessary 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 engagement applying to New Zealand and any convention country.
4: An appeal to the court shall lie from any order of the Commissioner under this section. 1921–22 No 18 s 62; Registered Designs Act 1949 s 10 (UK)
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 interested 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 refused 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 Commissioner under subsection (2). 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 department, and any person authorized in writing by a government department, may use any registered design for the services of the Crown in accordance with the following provisions 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 applied 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 Finance, 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 design 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 authorized directly or indirectly 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 registered 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
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. Registered Designs Act 1949 First Schedule paragraph 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 respect of which an application for registration is pending, made for the services of the Crown—
a: by a government department or a person authorized by a government department under section 16
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, between the registered proprietor or applicant for registration or any person who derives title from him or from whom he derives title and any person other than a government department shall be of no effect so far as those provisions restrict or regulate the use of the design, or any model, document, or information 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 infringement of any copyright subsisting in the model or document.
2: Where an exclusive licence granted otherwise than for royalties 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 section 16
b: in relation to any use of the design by the licensee by virtue of an authority given under section 16
3: Subject to the provisions of subsection (2), where the registered 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 reference to the use of the design, then,—
a: in relation to any use of the design by virtue of section 16 section 18
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
4: Where, under subsection (3) of section 16 section 18
a: in developing the said design; or
b: in making payments to the registered proprietor, other than royalties or other payments determined by reference 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 section exclusive licence Registered Designs Act 1949 First Schedule paragraph 2 (UK)
18: Reference of disputes as to Crown use
1: Any dispute as to the exercise by a government department or a person authorized by a government department of the powers conferred by section 16
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
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 references to the court in the foregoing provisions of this section shall be construed accordingly. Registered Designs Act 1949 First Schedule paragraph 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 government department, or a person authorized by a government department under section 16
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 essential 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 imports, or imports of any classes, from all or any countries 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 manner best calculated to serve the interests of the community; 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
2: In this section the expression period of emergency Gazette
3: All Orders in Council made under this section shall be laid before Parliament within 28 days after the date of the making 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. Registered Designs Act 1949 First Schedule paragraph 4 (UK) International arrangements
20: Orders in Council as to convention countries
1: 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 Council 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 political 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.
2: An order under this section is secondary legislation ( see Part 3 The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 20 replaced 14 October 1999 section 2(1) Designs Amendment Act 1999 Section 20(2) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
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 1 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 1 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 certificate 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 reason only of the registration or publication of the design in New Zealand during the period specified in the proviso to subsection (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 between 2 or more convention countries, is equivalent to an application duly made in any one of those convention countries; or
b: in accordance with the law of any convention country, is equivalent to an application duly made in that convention 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 1 application for protection in a convention country has been made, the first application may be disregarded and the second application 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 application, the first application was unconditionally withdrawn, abandoned, or refused; and
c: the first application had not been made available to the public in New Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and
d: no rights remain outstanding in respect of the first application; and
e: the first application has not served as a basis for claiming a right of priority in relation to another application in any country. 1939 No 26 s 55; Registered Designs Act 1949 s 14 (UK) Section 21(5) inserted 2 September 1996 Designs Amendment Act 1996
22: Extension of time for applications under section 21 in certain cases
1: If the Governor-General is satisfied that provision substantially equivalent to the provision to be made by or under this section has been or will be made under the law of any convention 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
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:
b: may, either generally or in any class of case specified in the regulations, fix the maximum extension which may be granted under this section:
c: may prescribe or allow any special procedure in connection with applications made by virtue of this section:
d: 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:
e: may provide for securing that the rights conferred by registration on an application made by virtue of this section shall be subject to such restrictions or conditions as may be specified by or under the regulations and in particular 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 communication made in accordance with such an agreement or arrangement as is mentioned in paragraph (a), and before 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.
3: Regulations under this section are secondary legislation ( see Part 3 1943 No 6 s 5; Registered Designs Act 1949 s 15 (UK) The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 22(3) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
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 arrangement made between Her Majesty's Government in New Zealand and the Government of any other country for the supply 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 pursuance 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 application for registration thereof, shall, in such circumstances and subject to such conditions or exceptions as may be prescribed by the regulations be presumed to have been in consequence of such a communication as is mentioned in that subsection.
3: The power to make regulations under this section, so far as it is exercisable for the benefit of persons from whom designs 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-General 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 design to or by Her Majesty's Government in New Zealand or the Government of any other country shall be construed as including references to the communication of the design by or to any person authorized in that behalf by the Government in question.
5: Regulations under this section are secondary legislation ( see Part 3 1946 No 32 s 4; Registered Designs Act 1949 s 16 (UK) The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 23(5) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
24: Regulations under section 22 or section 23
Any regulations made under section 22 section 23 1943 No 6 s 7; Registered Designs Act 1949 s 37(2) (UK) Register of designs, etc
25: Register of designs
1: There shall be kept
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
3: The register of designs shall be prima facie evidence of any matters required or authorized by this Act to be entered therein.
4: No notice of any trust, whether expressed, implied, or constructive, shall be entered in the register of designs, and the Commissioner shall not be affected by any such notice. 1921–22 No 18 ss 55, 118, 119; Registered Designs Act 1949 s 17 (UK) Section 25(1) amended 13 September 2014 section 249 Patents Act 2013 Section 25(2) amended 13 September 2014 section 249 Patents Act 2013
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. 1921–22 No 18 s 54; Registered Designs Act 1949 s 18 (UK)
27: Registration of assignments, etc
1: Where any person becomes entitled by assignment, transmission, or operation of a law to a registered design or to a share in a registered design, or becomes entitled as mortgagee, licensee, 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 application 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 mortgage, 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 instrument, as the case may be.
3: Where application is made under this section for the registration 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 interest, with particulars of the instrument (if any) creating it.
4: Subject to any rights vested in any other person of which notice 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 design, 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 enforced in like manner as in respect of any other personal property.
5: Except for the purposes of an application to rectify the register under the following provisions of this Act, a document in respect of which no entry has been made in the register of designs 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. 1921–22 No 18 s 122
27A: Application of Personal Property Securities Act 1999
Nothing in sections 25 to 27 Personal Property Securities Act 1999 Section 27A inserted 1 May 2002 section 191(1) Personal Property Securities Act 1999
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. 1921–22 No 18 s 123; Registered Designs Act 1949 s 20 (UK)
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 omission on the part of the Commissioner
2: Where the Commissioner proposes to make any such correction as aforesaid he shall give notice of the proposal to the persons 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 application for registration of a design or other document filed in pursuance of such an application, or in any proceedings in connection 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 interested 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 Commissioner of opposition to the request, and where any such notice 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 before he decides the case.
5: An appeal to the court shall lie from any decision of the Commissioner under this section. 1921–22 No 18 s 121; 1946 No 32 s 7; Registered Designs Act 1949 s 21 (UK) Section 29(1) amended 13 September 2014 section 249 Patents Act 2013
29A: Power of Commissioner to alter certain inconsistent information
1: This section applies if information in the register of designs relating to a person is inconsistent with primary business data relating to that person in the New Zealand Business Number Register.
2: If this section applies, the Commissioner may, in the prescribed manner (if any), alter the information in the register of designs so that it is consistent with the primary business data in the New Zealand Business Number Register.
3: In this section, primary business data section 20(2) Section 29A inserted 13 May 2016 section 41 New Zealand Business Number Act 2016
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 by the public
2: In the case of a design registered in respect of an article of any class prescribed for the purposes of this subsection, no representation 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 inspection by the public 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 representation 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 representation 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 authorized by the proviso to that subsection, 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 pursuance thereof shall at any time be open to inspection by the public
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. 1921–22 No 18 ss 59, 120; Registered Designs Act 1949 s 22 (UK) Section 30(1) amended 13 September 2014 section 249 Patents Act 2013 Section 30(2) amended 13 September 2014 section 249 Patents Act 2013 Section 30(4) amended 13 September 2014 section 249 Patents Act 2013 Section 30(5) inserted 19 April 2011 section 5 Designs Amendment Act 2010
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 copyright has been granted, and shall state the date of registration and the name and address of the registered proprietor. 1921–22 No 18 s 60; Registered Designs Act 1949 s 23 (UK)
32: Evidence of entries, documents, etc
1: A certificate purporting to be signed by the Commissioner and certifying that any entry which he is authorized by or under this Act to make has or has not been made, or that any other thing which he is so authorized to do has or has not been done, shall be prima facie evidence of the matters so certified.
2: A copy of, or an extract from, any entry in the register of designs or of any document that is registered or otherwise kept by the Commissioner that purports to be certified as a true copy or extract by the Commissioner is admissible in evidence in legal proceedings as if it were the original. 1921–22 No 18 ss 130, 131; Registered Designs Act 1949 s 24 (UK) Section 32(2) replaced 13 September 2014 section 249 Patents Act 2013 Legal proceedings and appeals
33: Certificate of contested validity of registration
1: If in any proceedings before the court the validity of the registration 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 of the registration of the 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. 1921–22 No 18 s 40; Registered Designs Act 1949 s 25 (UK)
34: Remedy for groundless threats of infringement proceedings
1: Where any person (whether entitled to or interested in a registered 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 copyright 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 defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement 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 unjustifiable; 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. 1921–22 No 18 s 65; Registered Designs Act 1949 s 26 (UK)
35: Appeal to
High
1: Every appeal under this Act against a decision of the Commissioner shall be to the High
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 Commissioner.
4: Except with the leave of the High High 1921–22 No 18 s 140 Section 35 heading amended 1 April 1980 section 12 Judicature Amendment Act 1979 Section 35(1) amended 1 April 1980 section 12 Judicature Amendment Act 1979 Section 35(4) amended 1 April 1980 section 12 Judicature Amendment Act 1979 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. 1921–22 No 18 s 124; Registered Designs Act 1949 s 29 (UK)
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 by the Commissioner
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. 1921–22 No 18 s 125 Section 37(1) amended 13 September 2014 section 249 Patents Act 2013
37A: Additional provisions for extending time limits
1: The Commissioner may extend the time prescribed in subsection (1) of section 21
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
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 application.
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 Commissioner may as a condition of granting the application require that written confirmation that the application is authorised 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 commencement of this section, as long as the application for the extension of time has been made before registration of the design 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 purposes:
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 accept in support of applications under this section:
c: prescribing the manner of advertising in the Journal extensions 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.
7: Regulations under this section are secondary legislation ( see Part 3 The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 37A inserted 20 October 1972 Designs Amendment Act 1972 Section 37A(2)﻿(a) amended 13 September 2014 section 249 Patents Act 2013 Section 37A(7) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
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 consider 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 Commissioner 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. 1921–22 No 18 ss 45, 127; Registered Designs Act 1949 s 30 (UK)
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 Commissioner 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 Commissioner of Patents has in proceedings under the Patents Act 2013
3: Any evidence given on oath before the Commissioner shall be deemed to be given in a judicial proceeding for the purposes of sections 108 109
4: Section 111 1921–22 No 18 s 129; Registered Designs Act 1949 s 31 (UK) Section 39(2) amended 13 September 2014 section 249 Patents Act 2013 Section 39(3) amended 1 January 1962 section 412(2) Crimes Act 1961 Section 39(4) amended 1 January 1962 section 412(2) Crimes Act 1961
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 authorized in the prescribed manner. 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 qualified person
a: that he has obtained or is entitled to obtain probate of the will of the deceased proprietor or letters of administration 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 letters of administration in his estate have not been granted or resealed in New Zealand:
c:
d: that the interests of the creditors of the deceased proprietor, 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 discretion 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 design:
b: where an applicant for the registration of a design has died before the registration of the design, whether before 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 section 70 section 73 1947 No 37 s 5 Section 41(1) qualified person repealed 24 May 1999 section 15(1) Estate Duty Repeal Act 1999 Section 41(4) amended 1 January 1971 section 84(1) Administration Act 1969 Restoration of lapsed copyright in registered design Heading inserted 19 April 2011 section 6 Designs Amendment Act 2010
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)
2: The Commissioner may, on a request made in the prescribed manner and in accordance with sections 41B to 41F section 12(2)
3: A request for an order under this section must contain a statement that fully sets out the circumstances that led to the relevant failure to comply with section 12(2)
4: The Commissioner may require the person who makes the request 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 19 April 2011 section 6 Designs Amendment Act 2010
41B: Persons who may make request for restoration of copyright
1: A request for an order under section 41A
2: If there were 2 or more registered proprietors, the request for an order under section 41A Section 41B inserted 19 April 2011 section 6 Designs Amendment Act 2010
41C: When request for restoration of copyright may be made
1: A request for an order under section 41A
2: However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied 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 further evidence that the Commissioner thinks fit. Section 41C inserted 19 April 2011 section 6 Designs Amendment Act 2010
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 section 41A
2: The Commissioner must publish a request made in accordance with sections 41A to 41C section 41A Section 41D inserted 19 April 2011 section 6 Designs Amendment Act 2010
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
a: that the relevant failure to comply with section 12(2)
b: if the period within which a request for an order under section 41A section 41C
2: The Commissioner must notify the person who made the request 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 19 April 2011 section 6 Designs Amendment Act 2010
41F: Order to be made on payment of unpaid fees
1: If the Commissioner has published a request under section 41D section 41A
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 prescribed 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 registered design—
a: may be made subject to a condition requiring the registration of any matter if the provisions of this Act concerning 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 persons 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
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 revoke 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 19 April 2011 section 6 Designs Amendment Act 2010 Restoration of design applications Heading inserted 19 April 2011 section 6 Designs Amendment Act 2010
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 imposed 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 application being abandoned under section 7(4)
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)
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 19 April 2011 section 6 Designs Amendment Act 2010
41H: When request for restoration of application may be made
1: A request under section 41G
2: However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request.
3: The applicant 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 the applicant to provide any further evidence that the Commissioner thinks fit. Section 41H inserted 19 April 2011 section 6 Designs Amendment Act 2010
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
a: that the default or neglect on the part of the applicant that resulted in the application being abandoned under section 7(4)
b: if the period within which a request under section 41G section 41H
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 19 April 2011 section 6 Designs Amendment Act 2010
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 applicant 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)
ii: if the period within which a request under section 41G section 41H
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 compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the design 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 19 April 2011 section 6 Designs Amendment Act 2010 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 $1,000
2: Where an offence against section 9
3: Despite anything to the contrary in section 25 Registered Designs Act 1949 s 33 (UK) Section 42(1) amended 1 July 2013 section 413 Criminal Procedure Act 2011 Section 42(3) replaced 1 July 2013 section 413 Criminal Procedure Act 2011
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 writing, knowing the entry or writing to be false, commits an offence and shall be liable on conviction
2: Despite anything to the contrary in section 25 1921–22 No 18 s 143(1); Registered Designs Act 1949 s 34 (UK) Section 43(1) amended 1 July 2013 section 413 Criminal Procedure Act 2011 Section 43(2) replaced 1 July 2013 section 413 Criminal Procedure Act 2011
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 respect of that article commits an offence and shall be liable on $40 registered in New Zealand
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 $40 1921–22 No 18 s 143(3), (4); Registered Designs Act 1949 s 35 (UK) Section 44(1) amended 1 July 2013 section 413 Criminal Procedure Act 2011 Section 44(2) amended 1 July 2013 section 413 Criminal Procedure Act 2011 Supplemental
45: Opening hours of Intellectual Property Office of New Zealand
1: The Commissioner may—
a: fix the opening hours for the Intellectual Property Office of New Zealand; and
b: declare the Intellectual Property Office of New Zealand closed on any day.
2: The Commissioner must publicly notify those opening hours, and (before closing the Intellectual Property Office of New Zealand) any closure, in accordance with section 5(3)
3: A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that period is not an opening day of the Intellectual Property Office of New Zealand, be done on the next opening day (and is then still in time). Section 45 replaced 13 September 2014 section 249 Patents Act 2013
45A: Closing of Intellectual Property Office of New Zealand at short notice
1: The Commissioner may declare the Intellectual Property Office of New Zealand closed without giving publication of the closure under section 45
a: he or she thinks it necessary or desirable because of an emergency or other temporary circumstances; and
b: it is not practicable to make that prior publication.
2: The Commissioner must, as soon as practicable after closing the Intellectual Property Office of New Zealand, publicly notify the closure in accordance with section 5(3) Section 45A replaced 13 September 2014 section 249 Patents Act 2013
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 Intellectual Property Office of New Zealand
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 with the Commissioner
ca: for prescribing the manner in which applications may be made under section 12(2)
cb: for regulating the procedure to be followed in connection with a request to the Commissioner under sections 41A to 41F section 41F
cc: for regulating the procedure to be followed in connection with a request to the Commissioner under sections 41G to 41J section 41J(2)
d: for regulating the procedure to be followed in connection with any application or request to the Commissioner or in connection with any proceeding before the Commissioner and for authorizing the rectification of irregularities of procedure:
e: for regulating the keeping of the register of designs:
ea: for regulating the manner in which the Commissioner may alter information in the register of designs under section 29A
f: for authorizing the publication and sale of copies of representations of designs and other documents in the Intellectual Property Office of New Zealand
g: for prescribing classes of persons whom the Commissioner may refuse to recognize as agents in respect of proceedings under this Act:
h: for prescribing matters to be published in the Journal
i: for prescribing anything authorized or required by this Act to be prescribed by regulations.
3: The structure of the fee system under this Act prescribed by regulations under this section may be such that any fees for an extension of the period of copyright in a registered design under section 12(2)
a: recover a share of the costs incurred by the Commissioner in performing his or her functions under this Act; and
b: recover those costs at a level that provides an appropriate incentive for persons to not extend that period of copyright if they do not receive sufficient benefit from having the copyright in the registered design.
4: Regulations under this section are secondary legislation ( see Part 3 1921–22 No 18 s 138; Registered Designs Act 1949 s 36 (UK) The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 46(2)﻿(a) amended 13 September 2014 section 249 Patents Act 2013 Section 46(2)﻿(c) amended 13 September 2014 section 249 Patents Act 2013 Section 46(2)﻿(ca) inserted 20 April 2010 section 7 Designs Amendment Act 2010 Section 46(2)﻿(cb) inserted 20 April 2010 section 7 Designs Amendment Act 2010 Section 46(2)﻿(cc) inserted 20 April 2010 section 7 Designs Amendment Act 2010 Section 46(2)﻿(ea) inserted 13 May 2016 section 41 New Zealand Business Number Act 2016 Section 46(2)﻿(f) amended 13 September 2014 section 249 Patents Act 2013 Section 46(2)﻿(h) amended 13 September 2014 section 249 Patents Act 2013 Section 46(3) replaced 13 September 2014 section 249 Patents Act 2013 Section 46(4) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
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 moneys so refunded shall be paid out of public money 1921–22 No 18 s 117; Registered Designs Act 1949 s 40 (UK) Section 47(1) amended 26 July 1989 section 86(1) Public Finance Act 1989 Section 47(2) amended 26 July 1989 section 86(1) Public Finance Act 1989
48: Service of notices
1: A notice, an application, or any other document may be given to, made to, or filed with a person by—
a: sending it by post addressed to the person at the person’s usual or last known address; or
b: emailing it to the person at an email address that is used by the person.
2: A notice posted to a person by the Commissioner must be treated as received by the person when it would have been delivered in the ordinary course of post.
3: In the absence of proof to the contrary, a notice emailed to a person by the Commissioner must be treated as received by the person on the second working day after the date on which it is emailed, and, in proving that the notice was emailed, it is sufficient to prove that it was properly addressed and sent to the email address. Section 48 replaced 16 December 2017 section 61 Electronic Interactions Reform Act 2017
49: Annual report
Section 49 repealed 13 September 2014 section 249 Patents Act 2013
50: Application of Act to Tokelau
This Act shall be in force in Tokelau Section 50 heading amended 9 December 1976 section 3(8) Tokelau Amendment Act 1976 Section 50 amended 9 December 1976 section 3(8) Tokelau Amendment Act 1976
51: Saving
1: Nothing in this Act shall be construed as authorizing or requiring the Commissioner to register a design the use of which would, in his opinion, be contrary to law or morality.
2: However, the Commissioner may register a design even if its use is restricted or prohibited under the Smokefree Environments and Regulated Products Act 1990 1939 No 26 s 71; Registered Designs Act 1949 s 43(1) (UK) Section 51(2) inserted 14 March 2018 section 21(2) Smoke-free Environments (Tobacco Standardised Packaging) Amendment Act 2016 Section 51(2) amended 11 November 2020 section 30 Smokefree Environments and Regulated Products (Vaping) Amendment Act 2020
52: Repeals and savings
1: The enactments specified in the Schedule
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 commencement of this Act and the notice was not given, subsection (2) of section 10
5: Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act. Registered Designs Act 1949 s 48 (UK)