New Zealand

Designs Amendment Regulations 2011

 

 

2011/75

Designs Amendment Regulations 2011

Anand Satyanand, Governor-General

Order in Council

At Wellington this 28th day of March 2011

Present: His Excellency the Governor-General in Council

Pursuant to section 46 of the Designs Act 1953, His Excellency the Governor-General, acting on the advice and with the consent of the Executive Council, makes the following regulations.

Contents

Page
1 Title 3
2 Commencement 3
3 Principal regulations amended 3
4 Interpretation 3
5 New regulation 5 substituted 4
5 Form of payment 4
6 Payments by post 4
7 Regulation 7 revoked 4
8 Regulation 8 revoked 4
9 New Part 2A inserted 4

Part 2A Compliance with regulations by electronic means

7 Definitions used in this Part 4 8 Means of communicating with Commissioner 5 8A Signature requirements for communications by 5 electronic means 8B Commissioner may communicate by electronic 6 means 8C Interrelationship of this Part with rest of 6 regulations 10 Size, etc., of documents 7 11 Signature of documents by firms and bodies corporate 7 12 Authorization of agent 7 13 Regulation 16 revoked 7 14 New regulation 20A inserted 7 20A Applicantmayrequestdelayofissueofcertificate 7 of registration 15 New regulation 22 substituted 8 22 Separate applications for same design for more 8 than 1 article 16 Name of article and novel features of design to be stated 8 17 New regulations 25 and 26 substituted 8 25 Representation of design to be furnished 8 26 Means of providing representation of design 8 18 Words, letters, or numerals 9 19 Repeating surface patterns 9 20 Requirements 9 21 New Part 8A inserted 9

Part 8A Restoration of design applications

40A Request for restoration of abandoned design 9 application 40B Period for notice of opposition 9 40C Protection of persons who avail themselves of 9 design 22 New regulation 41 substituted 10 41 Extension of period of copyright for further 5 10 years 23 New Part 9A inserted 10

Part 9A Restoration of lapsed copyright in registered design

44A Request for restoration of lapsed copyright in 10

registered design

44B Period for notice of opposition 11

44C Protection of persons who avail themselves of 11 design

24 Schedule 2 amended 11

Regulations

1 Title

Schedule 12 New form 12 substituted

These regulations are the Designs Amendment Regulations 2011.
2 Commencement These regulations come into force on 19 April 2011.
3 Principal regulations amended These regulations amend the Designs Regulations 1954.
4 (1) Interpretation The definitions of lodged and specimen in regulation 2 are revoked.
(2) Regulation2isamendedbyinsertingthefollowingdefinitions in their appropriate alphabetical order: Commissioner’s Internet site means the Internet site operated by, or on behalf of, the Commissioner electronic reproduction means a copy of a paper document thatistransmittedorstoredbyelectronicmeans(forexample, an image of a paper document that has been electronically
scanned or a copy of a paper document that is sent by means
of a fax machine)
paper document means a form or document that is rep
resented or reproduced in a visible and tangible form and
medium (for example, in print)”.
5 New regulation 5 substituted
Regulation 5 is revoked and the following regulation substi
tuted:
5 Form of payment

“(1) Fees may be paid

“(a) by electronic means; or

“(b) by other means acceptable to the Commissioner. “(2) The Commissioner may delay taking an action until the fee

that must be paid for that action has been received.

6 Payments by post

Regulation 6 is amended by omitting “Moneyand substituting “Payments”.

7 Regulation 7 revoked

Regulation 7 is revoked.

Part 2A Compliance with regulations by

electronic means 7 Definitions used in this Part In this Part,give means issue, furnish, lodge, supply, produce, file, send,

or give in any other manner referred to in these regulations information or a document means any evidence, application,authority,request,representation,form,certificate,state

ment, notice, paper,or any other type of informationor document referred to in these regulations.

8 Means of communicating with Commissioner

“(1) This regulation applies to a requirement in these regulations for“(a) information or a document to be lodged; or “(b) information or a document to be given to the Commis

sioner; or “(c) anytypeofrequest,communication,orcorrespondence to be made with the Commissioner.

“(2) Therequirementismetbyprovidingtheinformationordocument,request,communication,orcorrespondencetotheCommissioner“(a) by means of the Commissioner’s Internet site; or “(b) in accordance with section 48(1) of the Act; or “(c) by other means acceptable to the Commissioner.

8A Signaturerequirementsforcommunicationsbyelectronic means

“(1) This regulation applies to a requirement in these regulations for information or a document“(a) to be signed; or “(b) to contain or have a signature upon it; or “(c) containingasignaturetobelodgedorgiventotheCom

missioner. “(2) The requirement is met“(a) if the person who is required to sign the information or document provides it (with or without signature) to the Commissioner by means of the Commissioner’s Internet site by logging on to an account on that site that he or she has the authority to use; or “(b) ifanelectronicreproductioncontainingtherelevantsig

nature is provided to the Commissioner; or “(c) by other means acceptable to the Commissioner. “(3) If a person provides an electronic reproduction in accordance

with subclause (2)(b), the person must“(a) retain the original copy of the paper document in the person’s possession or control until the time during

which a hearing or an appeal under the Act or these regulationstowhichthedocumentmayberelevanthas ended; and

“(b) make the paper document available to any hearing or appealundertheActortheseregulationsorattheCommissioner’s direction.

8B Commissioner may communicate by electronic means

“(1) A requirement in these regulations for the Commissioner to give information or a document, or to communicate or correspond in any way (whether in writing or otherwise), is met byprovidingtheinformationordocument,communication,or correspondence“(a) by means of the Commissioner’s Internet site; or “(b) in accordance with section 48(1) of the Act; or “(c) byothermeansthatarereasonableinthecircumstances.

“(2) TheCommissionermustnotifytherecipientofinformationor a document, communications, or correspondence provided in accordance with subclause (1)(a) if“(a) there is a time frame within which the recipient must

respond to it; or “(b) it is reasonable to expect the Commissioner to do so in the circumstances.

8C Interrelationship of this Part with rest of regulations “(1) Nothing in regulation 8A(2)(a) applies to

“(a) an instrument, a document, or an official or certified copy of an instrument or a document that is provided in support of an application that is referred to in Part 10; or

“(b) evidence that is required to be filed under these regulations; or “(c) statutory declarations or affidavits that are required by these regulations. “(2) Nothing in this Part overrides regulations 13(2), 17, or 18. “(3) Except as set out in subclauses (1) and (2), this Part applies despite anything to the contrary in these regulations.

10 Size, etc., of documents

(1)
Regulation10 isamendedbyinserting “asapaperdocumentafter “these regulations”.
(2)
Regulation 10 is amended by adding the following subclause as subclause (2):

“(2) All electronic reproductions lodged or given under the Act or theseregulationsmustbeabletobereadilyprintedononeside onlyofpaperofapproximatelyA4internationalsize,andhavingonthelefthandpartofthepaperamarginofapproximately 5 cm.

11 Signature of documents by firms and bodies corporate Regulation 11 is amended by omitting subclause (1) and sub stituting the following subclause:

“(1) A document lodged by a firm must be signed by a partner or any other person who satisfies the Commissioner that he or she is authorized to sign the document on behalf of the partnership.

12 Authorization of agent

(1)
Regulation 13 is amended by omitting “in writing”.
(2)
Regulation 13 is amended by adding the following subclause as subclause (2):

“(2) Theauthoritymustbelodgedasanelectronicreproductionor a paper document.

13 Regulation 16 revoked

Regulation 16 is revoked.

14 New regulation 20A inserted The following regulation is inserted after regulation 20:

20A Applicant may request delay of issue of certificate of registration

“(1) An applicant for the registration of a design may request the Commissioner to delay issuing a certificate of registration for that application for a period of up to 15 months from the date on which the application was made.

“(2) The Commissioner may comply with that request.

15 New regulation 22 substituted Regulation 22 is revoked and the following regulation substi tuted:

22 Separate applications for same design for more than 1 article

“(1) Ifthesamedesignistoberegisteredinrespectofmorethan1 article,aseparateapplicationmustbemadeinrespectofeach article.

“(2) Eachapplicationmustbetreatedasaseparateanddistinctapplication.

16 Name of article and novel features of design to be stated

Regulation 23(3) is revoked.

17 New regulations 25 and 26 substituted

Regulations25to28 arerevokedandthefollowingregulations

substituted:

25 Representation of design to be furnished

“(1) Anapplicationfortheregistrationofadesignmustbeaccompanied by a representation of the design.

“(2) Ifthedesignistobeappliedtoasetofarticles,therepresentation must show the design as applied to each different article included in the set.

“(3) TheCommissionermayatanytimebeforeregistrationrequire additional representations.

26 Means of providing representation of design “(1) Representations must be given to the Commissioner“(a) as 1 or more digital images in an electronic file format acceptable to the Commissioner; or “(b) in any other format acceptable to the Commissioner. “(2) Eachrepresentationmustclearlyandunambiguouslyshowthe novel design features of the design as applied to the article. “(3) Each digital image may be in black and white, grey scale, or colour. “(4) Each digital image must be“(a) able to be readily printed on a single-sided A4 international size sheet of paper; and

“(b) clearly labelled stating the view of the article (for example,perspective view, front view, side view, plan, or otherwise).

18 Words, letters, or numerals

Regulation 29 is amended by omitting “or specimens”.

19 Repeating surface patterns Regulation 30 is amended by omitting , and shall not be of less size than 17 cm by 12 cm”.

20 Requirements

Regulation 34(2) is amended by omitting “or specimens”.

21 New Part 8A inserted

The following Part is inserted after Part 8: Part 8A Restoration of design applications

40A Request for restoration of abandoned design application A request under section 41G(2) of the Act for the restoration of an application for the registration of a design that is abandonedmustbemadewithin3monthsofthedateonwhichthe application is deemed to be abandoned under section 7(4) of the Act.

40B Period for notice of opposition A notice of opposition under section 41I(1) of the Act must be given to the Commissioner within 2 months of the date on whichtherequestreferredtoinregulation40Aispublishedin the Journal in accordance with section 41G(5) of the Act.

40C Protection of persons who avail themselves of design

“(1) Every order under section 41J of the Act must contain or be subject to the provisions prescribed in this regulation.

“(2) No action or other proceeding may be commenced or prosecuted, nor any royalties, damages, or account of profits recovered,inrespectofadesignthatapersonreferredtoinsec

9

tion 41J(2) of the Act availed themselves of, or took definite stepstoavailthemselvesof,onthegroundthatthepersonhas infringed, or infringes, the copyright in the design.

“(3) However,subclause(2)appliesonlytotheextentthattheperson“(a) continues to act in a manner that is consistent with, but doesnotgobeyond,thewayinwhichthepersonavailed themselves of the design; or “(b) continues to act in a manner that is consistent with the definitive steps that were taken to avail themselves of the design so as to complete those steps; or “(c) uses the result of the completion of the definitive steps in a manner that is consistent with, but does not go beyond,whatwascontemplatedbythosestepsinorderto avail themselves of the design.

“(4) To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the date of registration of the design.

22 New regulation 41 substituted Regulations 41 and 42 are revoked and the following regula tion is substituted:

41 Extension of period of copyright for further 5 years Anapplicationundersection12(2)oftheActforanextension of the period of copyright for a second or a third period of 5 years must be made in form 12.

Part 9A Restoration of lapsed copyright in registered design

44A Request for restoration of lapsed copyright in registered design Arequestundersection41A(2)oftheActfortherestorationof copyright in a registered design that has ended must be made within 12 months of the date on which the copyright ended.

44B Period for notice of opposition A notice of opposition under section 41E(1) of the Act must be given to the Commissioner within 2 months of the date on whichtherequestreferredtoinregulation44Aispublishedin the Journal in accordance with section 41D(2) of the Act.

44C Protection of persons who avail themselves of design

“(1) Every order under section 41A of the Act must contain or be subject to the provisions prescribed in this regulation.

“(2) No action or other proceeding may be commenced or prosecuted,noranyroyalties,damages,oraccountofprofitsrecovered,inrespectofaregistereddesignthatapersonreferredto in section 41F(2)(b) of the Act availed themselves of, or took definite steps to avail themselves of, on the ground that the personhasinfringed,orinfringes,thecopyrightinthedesign.

“(3) However,subclause(2)appliesonlytotheextentthattheperson“(a) continues to act in a manner that is consistent with, but doesnotgobeyond,thewayinwhichthepersonavailed themselves of the design; or “(b) continues to act in a manner that is consistent with the definitive steps that were taken to avail themselves of the design so as to complete those steps; or “(c) uses the result of the completion of the definitive steps in a manner that is consistent with, but does not go beyond,whatwascontemplatedbythosestepsinorderto avail themselves of the design.

“(4) Toavoiddoubt,theprotectioninsubclause(2)appliestoactivitiesundertakenatanytimeafterthedateonwhichtheperiod ofcopyrightintheregistereddesignendedassetoutinsection 41A of the Act (including after the date on which the period of copyright is extended).

24 Schedule 2 amended

(1)
Form2ofSchedule2 isamendedbyomitting Four identical representations or specimens”andsubstituting“A representation.
(2)
Form3ofSchedule2 isamendedbyomitting Four identical representations or specimens”andsubstituting“A representation.
(3)
Form4ofSchedule2 isamendedbyomitting Four identical representations or specimens”andsubstituting“A representation.
(4)
Form5ofSchedule2 isamendedbyomitting Four identical representations or specimens”andsubstituting“A representation.

(5) Schedule2isamendedbyrevoking forms12 and 13 andsubstituting the form set out in the Schedule.

Schedule r 24(5) New form 12 substituted

Form Designs No 12 Application for extension of copyright indesign for period of 5 years

Designs Act 1953

To the Commissioner of Designs

Intellectual Property Office of New Zealand

205 Victoria Street

PO Box 9241

Marion Square

Wellington 6141

I/We*,[insert name and full address to which certificate is to be sent],

the registered proprietor of design number [no], apply for the extension of the period of copyright in that design for a second/third* period of 5 years.

* Select one

Signature:

Form Designs No 12—continued

[ThispartoftheformtobefilledinattheIntellectualPropertyOffice of New Zealand]

Certificate of extension of copyright in design for period of 5 years This is to certify that [name] on[date] applied, and paid the prescribedfee,fortheextensionofcopyrightindesignnumber[no]and that the copyright is extended for a second/third* period of 5 years until [date].

* Select one

Commissioner of Designs Intellectual Property Office of New Zealand 205 Victoria Street PO Box 9241 Marion Square Wellington 6141

Rebecca Kitteridge, Clerk of the Executive Council.

Explanatory note

This note is not part of the regulations, but is intended to indicate their general effect.

These regulations, which come into force on 19 April 2011, amend the DesignsRegulations1954 . Theamendmentsfallinto2maincategories. First, those that allow for various matters prescribed in the DesignsRegulations1954totake place by electronicmeans (inparticular,bymeansoftheCommissionerofDesigns’Internetsite)and otherwise streamline the application processes. Secondly, amend ments that are required in order to implement the Designs Amend ment Act 2010, which comes into force on 19 April 2011.

Anew Part 2A isinsertedinthe DesignsRegulations1954 . New Part 2A provides that

  • arequirementintheregulationsforinformationoradocument tobegiventotheCommissionermaybesatisfiedbyproviding thatinformationordocumentbymeansoftheCommissioner’s Internet site; and
  • arequirementintheregulationsforinformationoradocument tobesignedmaybesatisfiedbyprovidingthatinformationor documentbyloggingontoanaccountontheCommissioner’s Internetsite,orbyprovidinganelectronicreproductionofthe information or document with a signature on it; and
  • arequirementintheregulationsfortheCommissionertogive information or a document may be satisfied by providing that information or document by means of the Commissioner’s Internet site.

A number of consequential amendments are made in order to facilitate the electronic communication established in new Part 2A, and also to allow for electronic payment of fees.

Theapplicationprocessesarestreamlinedthroughaseriesofamendmentsthat,amongstotherthings,removetheneedformultiplecopies of documents and for specimens to be lodged with applications. A new regulation 20A isalsoinsertedtoallowanapplicantfortheregistration of a design to request a delay in granting registration for a period of up to 15 months.

New sections 41G to 41J of the Designs Act 1953 (as inserted by the Designs Amendment Act 2010 on 19 April 2011) provide for the restoration of design applications that are deemed to be abandoned. Theseregulationsinsertanew Part 8A intothe DesignsRegu lations1954 toprovideforvariousmattersrequiredtoimplementthat process, including

  • howtherequestforrestorationofanapplicationmustbemade and when it must be made by; and
  • when a notice of opposition must be made by; and
  • the protections that are to apply to a person who has availed themselves of a design while the application for the registration of that design was abandoned.

New sections 41A to 41F of the Designs Act 1953 (as inserted by the Designs Amendment Act 2010 on 19 April 2011) provide for the restoration of the lapsed copyright in a registered design. These regulations insert a new Part 9A into the Designs Regulations 1954 to provide for various matters required to implement that process, including

  • how a request for restoration of copyright must be made and when it must be made by; and
  • when a notice of opposition must be made by; and
  • the protections that are to apply to a person who has availed themselves of a design while the copyright in the design was lapsed.

Issued under the authority of the Acts and Regulations Publication Act 1989. Date of notification in Gazette: 31 March 2011. These regulations are administered by the Ministry of Economic Development.

Wellington, New Zealand: Published under the authority of the New Zealand Government—2011

 

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