World Intellectual Property Organization

New Zealand

Designs Act 1953 (reprinted as at 19 April 2011)

 

 

Reprint as at 19 April 2011

Designs Act 1953

Public Act 1953 No 65 Date of assent 26 November 1953

Contents

Page Title 3 1 Short Title and commencement 4 2 Interpretation 4 3 Commissioner of Designs 6 4 Assistant Commissioners of Designs and other officers 6

Registrable designs and proceedings for registration

5 Designs registrable under Act 7 6 Proprietorship of designs 8 7 Proceedings for registration 8 8 Registrationofsamedesigninrespectofotherarticles,etc 9 9 Provisions for ensuring secrecy in respect of designs 10

relevant for defence purposes 10 Provisions as to confidential disclosure, etc 11

Effect of registration, etc

11 Right given by registration 13

Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this eprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthiseprint,togetherwith other explanatory material about this eprint.

This Act is administered by the Ministry of Justice.

12 Period of copyright 13 13 Exemption of innocent infringer from liability for 14 damages, etc 14 Compulsory licence in respect of registered design 14 15 Cancellation of registration 15

Use of registered designs for services of the Crown

16 Use of registered designs for services of the Crown 15 17 Rights of third parties in respect of Crown use 17 18 Reference of disputes as to Crown use 19 19 Special provisions as to Crown use during emergency 20

International arrangements

20 Orders in Council as to convention countries 21 21 Registration of design where application for protection in 22 convention country has been made 22 Extension of time for applications under section 21 in 23 certain cases 23 Protection of designs communicated under arrangements 24 with other countries 24 Regulations under section 22 or section 23 26

Register of designs, etc

25 Register of designs 26 26 Certificate of registration 26 27 Registration of assignments, etc 27 27A Application of Personal Property Securities Act 1999 28 28 Rectification of register by the Court 28 29 Power of Commissioner to correct errors 29 30 Inspection of registered designs 30 31 Information as to existence of copyright 31 32 Evidence of entries, documents, etc 31

Legal proceedings and appeals

33 Certificate of contested validity of registration 31 34 Remedy for groundless threats of infringement 32 proceedings 35 Appeal to High Court 33

Powers and duties of Commissioner

36 Exercise of discretionary powers of Commissioner 33 37 Commissioner may grant extension of time 33 37A Additional provisions for extending time limits 34 38 Costs and security for costs 35

2

39 Evidence before Commissioner 36 40 Recognition of agents 36 41 Commissioner may dispense with production of probate 37 or letters of administration in certain cases

Restoration of lapsed copyright in registered design

41A Restoration of lapsed copyright in registered design 38 41B Persons who may make request for restoration of 39 copyright 41C When request for restoration of copyright may be made 39 41D Commissioner’s consideration of whether prima facie 39 case has been made out for restoration 41E Notice of opposition and reasonable opportunity to be 40 heard 41F Order to be made on payment of unpaid fees 40

Restoration of design applications

41G Requestforrestorationofabandoneddesignapplication 41 41H Whenrequestforrestorationofapplicationmaybemade 42 41I Notice of opposition 43 41J Commissioner to determine matter 43

Offences

42 Offences in respect of designs required to be kept secret 44 43 Falsification of register, etc 44 44 Fine for falsely representing a design as registered 45

Supplemental

45 Hours of business 45 45A Closing of Patent Office at short notice 46 46 Regulations 46 47 Fees 48 48 Service of notices, etc, by post 48 49 Annual report 49 50 Application of Act to Tokelau 49 51 Saving 49 52 Repeals and savings 49

Schedule 51 Enactments repealed

An Act to consolidate and amend certain enactments relating to designs

s 1 Designs Act 1953 Reprinted as at19 April 2011
1 Short Title and commencement
(1) This Act may be cited as the Designs Act 1953.
(2) ThisActshallcomeintoforceonadaytobeappointedforthe
commencementthereofbytheGovernor-GeneralbyProclam
ation.
2 Interpretation
(1) In this Act, unless the context otherwise requires,
article means any article of manufacture; and includes any
part of an article if that part is made and sold separately
assigneeincludesthepersonalrepresentativeofadeceasedas
signee; and references to the assignee of any person include
referencestothe assignee of the personalrepresentative or as
signee of that person
Commissioner means the Commissioner of Designs
Commonwealth means the British Commonwealth of Na
tions; and includes every territory for whose international
relations the Government of any country of the Common
wealth is responsible
convention country, in any provision of this Act, means an
entityforthetimebeingdeclaredbyanorderundersection20
to be a convention country for the purposes of that provision
copyright has the meaning assigned to it by subsection (1) of
section 11
Court means the High Court
design means features of shape, configuration, pattern, or
ornament applied to an article by any industrial process or
means, being features which in the finished article appeal
to and are judged solely by the eye; but does not include a
method or principle of construction or features of shape or
configuration which are dictated solely by the function which
the article to be made in that shape or configuration has to
perform
Government Department means any Department or instru
ment of the Executive Government of New Zealand
JournalmeansthePatentOfficeJournalpublishedundersub
section (1) of section 112 of the Patents Act 1953

prescribed means prescribed by regulations made under this Act

proprietor has the meaning assigned to it by section 6 registered proprietor means the person or persons for the time being entered in the register of designs as proprietor of the design

setof articles meansanumberofarticles ofthesamegeneral character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications orvariationsnot sufficient toalterthe character or substantially to affect the identity thereof, is applied.

(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)
AnyquestionarisingunderthisActastowhetheranumberof articles constitute a set of articles shall be determined by the Commissioner; and notwithstanding anything in this Act any determinationoftheCommissionerunderthissubsectionshall be final.
(4)
For the purposes of subsection (1) of section 21 and of sec tion23 ,theexpressionpersonalrepresentative,inrelationto adeceasedperson, includesthelegalrepresentative ofthedeceased appointed in any country outside New Zealand.
(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 coun

try,mustbereadasareferencetoapplicationforprotection under the rules of the entity:

(b) areferenceinthisActtothelawofaconventioncountry must be read as a reference to the rules of the entity:

s 3 Designs Act 1953 Reprinted as at19 April 2011
(c) a reference in this Act to the Government of a conventioncountrymustbereadasareferencetothegoverning body of the entity. Compare: Registered Designs Act 1949, s 44 (UK); 1921-22 No 18 s 2 Section 2(1) convention country: substituted, on 14 October 1999, by section 2(2) of the Designs Amendment Act 1999 (1999 No 120). Section 2(1) Court: amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124). Section 2(5): inserted, on 14 October 1999, by section 2(3) of the Designs Amendment Act 1999 (1999 No 120).
3 Commissioner of Designs (1) There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Designs. (2) The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed as Commissioner of Designs under this Act. Compare: 1921-22 No 18 s 113 Section3(1): amended,on1January1963,bysection77(1)oftheStateServices Act 1962 (1962 No 132). Section 3(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).
4 Assistant Commissioners of Designs and other officers (1) There may from time to time be appointed under the State Sector Act 1988(a) one or more fit persons to be Assistant Commissioners of Designs: (b) such other officers and employees as may be necessary for carrying out the purposes of this Act. (2) EveryAssistantCommissionerofDesignssoappointed,while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and every reference in this or any other Act to the Commissioner shall, so far as may be necessary for the purpose of giving effect to the

provisionsofthissection,bedeemedtoincludeareferenceto every Assistant Commissioner of Designs.

(3) The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and TradeMarksunderthePatents,Designs,andTradeMarksAct 1921-22shall be deemedto have beenappointed anAssistant Commissioner of Designs under this Act. Compare: 1921-22 No 18 ss 114, 115 Section4(1): amended,on1January1963,bysection77(1)oftheStateServices Act 1962 (1962 No 132). Section 4(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).

Registrable designs and proceedings forregistration

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,beregisteredunderthisActinrespectofanyarticle or set of articles specified in the application.
(2)
SubjecttotheprovisionsofthisAct,adesignshallnotberegistered 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 inrespectofthesameoranyotherarticleordiffersfromsucha designonlyinimmaterialdetailsorinfeatureswhicharevariants commonly used in the trade.
(3)
Regulations made under this Act may provide for excluding fromregistrationunderthisActdesignsforsucharticles,being articles which are primarily literary or artistic in character, as may be specified in the regulations. Compare: Registered Designs Act 1949,s1 (UK); 1921-22 No 18 ss 2, 52
s 6 Designs Act 1953 Reprinted as at19 April 2011
6 (1) Proprietorship of designs Subjecttotheprovisionsofthissection,theauthorofadesign 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 operationoflaw,inanypersonotherthantheoriginalproprietor, 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.
Compare: Registered Designs Act 1949, s 2 (UK); 1921-22 No 18 s 52(1)
7 (1) Proceedings for registration An application for the registration of a design shall be made inthe prescribedform and shallbe filed atthe PatentOffice in the prescribed manner.
(2) Forthepurposeofdecidingwhetheradesignisnewororiginal theCommissionermaymakesuchsearches,ifany,ashethinks 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) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under subsection (3). Compare: Registered Designs Act 1949, s 3 (UK); 1921-22 No 18 s 52

8 Registrationofsamedesigninrespectofotherarticles,etc

(1) Where the registered proprietor of a design registered in respect of any article makes an application

(a)
forregistration,inrespectofoneormoreotherarticles, of the registered design; or
(b)
for registration, in respect of the same or one or more other articles, of a design consisting of the registered designwithmodificationsorvariationsnotsufficientto 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: providedthattheperiodofcopyrightinadesignregisteredby 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) Whereanypersonmakesanapplicationfortheregistrationof 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 modificationsorvariationsnotsufficienttoalterthecharacteror substantially to affect the identity thereof,

then,if atany time while the application is pending the applicantbecomestheregisteredproprietorofthedesignpreviously registered,theforegoingprovisionsofthissectionshallapply

9

s 9 Designs Act 1953 Reprinted as at19 April 2011
as if at the time of making the application the applicant had
been the registered proprietor of that design.
Compare: Registered Designs Act 1949, s 4 (UK); 1921-22 No 18 s 53; 1939 No 26 s 69
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
fordefencepurposes,orisintheopinionoftheCommissioner
likely to be valuable for defence purposes, he may give direc
tions for prohibiting or restricting the publication of informa
tion 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 at the Patent Office during the continuance in force
of the directions.
(3) Where the Commissioner gives any such directions as afore
said, he shall give notice of the application and of the direc
tions to the Minister of Defence, and thereupon the following
provisions shall have effect, that is to say:
(a) theMinisterofDefenceshall,uponreceiptofthenotice,
considerwhetherthepublicationofthedesignwouldbe
prejudicialtothedefenceofNewZealand,and,unlessa
noticeunderparagraph(c)haspreviouslybeengivenby
the Minister of Defence to the Commissioner, shall re
considerthatquestionbeforetheexpirationof9months
fromthedateoffilingof theapplicationforregistration
ofthedesignandatleastonceineverysubsequentyear:
(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 de
sign has been registered, inspect the representation or

specimen of the design filed in pursuance of the application:

(c)
ifuponconsiderationofthedesignatanytimeitappears 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)
onthereceiptofanysuchnoticetheCommissionershall revoke the directions and may, subject to such conditions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application or registration, whether or not that time has previously expired.

(4) NopersonresidentinNewZealandshall,exceptundertheauthorityofawrittenpermitgrantedbyoronbehalfoftheCommissioner, 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.

Compare: Registered Designs Act 1949, s 5 (UK)

10 Provisions as to confidential disclosure, etc

(1)
An application for the registration of a design shall not be re-fused,andtheregistrationofadesignshallnotbeinvalidated, 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 forregistration,theacceptanceofafirstandconfidential order for goods bearing the design.
(2)
An application for the registration of a design shall not be re-fused,andtheregistrationofadesignshallnotbeinvalidated, by reason only
(a)
that a representation of the design, or any article to which the design hasbeenapplied, hasbeendisplayed, 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, whether the exhibition is held in New Zealandor elsewhere; or
(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),

iftheapplicationforregistrationofthedesignismadenotlater than 6 months after the date ofthe opening of the exhibition.

(3) An application for the registration of a design shall not be re-fused,andtheregistrationofadesignshallnotbeinvalidated, byreasononlyofthecommunicationofthedesignbytheproprietor thereof to a Government Department or to any person authorised by a Government Department to consider the merits of the design, or of anything done in consequence of such a communication. Compare: Registered Designs Act 1949, s 6 (UK);1921-22 No18 ss 58, 63 Section 10(2)(a): amended, on 2 September 1996, by section 2 of the Designs Amendment Act 1996 (1996 No 118). Section10(2)(a): amended,on12November1980,bysection5(2)oftheShop Trading Hours Amendment Act 1980 (1980 No 36).

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 istosay,
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 regis
tered 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 of the Crown Proceedings Act 1950, the registration
of a design shall have the same effect against the Crown as it
has against a subject.
Compare: Registered Designs Act 1949, s 7 (UK); 1921-22 No 18 ss 56(1), 66
12 Period of copyright
(1) Copyrightinaregistereddesignshall,subjecttotheprovisions
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
thesecondperiod,ifanapplicationforextensionoftheperiod
ofcopyrightforthesecondperiodorthirdperiodismadeinthe
prescribed manner and the prescribed fee is also paid before
theexpirationoftheoriginalperiodorthesecondperiod,asthe
case may be, or if such application is made and the fee is paid
withinsuchfurtherperiod(notexceeding6months)asmaybe
specified in a request to the Commissioner and accompanied
by the prescribed additional fee.
(3) Subsection (2) is subject to sections 41A to 41F (which pro
vide for the restoration of lapsed copyright in a registered de
sign).
Compare: Registered Designs Act 1949, s 8 (UK); 1921-22 No 18 s 56
Section 12(2): substituted, on 20 October 1972, by section 2 of the Designs Amendment Act 1972 (1972 No 53).
s 13 Designs Act 1953 Reprinted as at19 April 2011
Section 12(2): amended, on 19 April 2011, by section 4(1) of the Designs Amendment Act 2010 (2010 No 15).
Section 12(3): added, on 19 April 2011, by section 4(2) of the Designs Amendment Act 2010 (2010 No 15).
13 Exemption of innocent infringer from liability for
damages, etc
(1) Inproceedingsfortheinfringementofcopyrightinaregistered
design, damages or account of profits shall not be awarded
againstadefendantwhoprovesthatatthedateoftheinfringe
ment he was not aware and had no reasonable ground for sup
posing 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 or
any abbreviation thereof, or any word or words expressing or
implying that the design applied to the article has been regis
tered,unlessthewordorwordsareaccompaniedbythewords
New Zealand or the letters NZ and by the number of the de
sign.
(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.
Compare: Registered Designs Act 1949, s 9 (UK); 1921-22 No 18 s 38
14 Compulsory licence in respect of registered design
(1) Atanytimeafteradesignhasbeenregisteredanypersoninter
ested may apply to the Commissioner for the grant of a com
pulsory licence in respect of the design on the ground that the
designisnotappliedinNewZealandbyanyindustrialprocess
or means to the article in respect of which it is registered to
suchanextentasisreasonableinthecircumstancesofthecase;
andtheCommissionermaymakesuchorderontheapplication
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
deedexecutedbytheregisteredproprietorandallotherneces
sary parties, granting a licence in accordance with the order.
(3)
No order shall be made under this section which would be at variancewithanytreaty,convention,arrangement,orengagement 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. Compare: Registered Designs Act 1949, s 10 (UK); 1921-22 No 18 s 62

15 Cancellation of registration

(1)
TheCommissionermay,uponarequestmadeintheprescribed manner by the registered proprietor, cancel the registration of a design.
(2)
Atanytimeafteradesignhasbeenregisteredanypersoninterested may apply to the Commissioner for the cancellation of theregistrationofthedesignonthegroundthatthedesignwas not,atthedateoftheregistrationthereof,newororiginal,oron any other ground on which the Commissioner could have refusedtoregisterthedesign;andtheCommissionermaymake 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). Compare: Registered Designs Act 1949, s 11 (UK); 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 authorised 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 registeredproprietororanypersonfromwhomhederivestitle, anyuseofthedesignbyvirtueofthissectionmaybemadefree of any royalty or other payment to the registered proprietor.
(3)
If and so far as the design has not been so recorded or appliedasaforesaid,anyuseofthedesignmadebyvirtueofthis section at any time after the date of registration thereof, or in consequenceofanysuchcommunicationasaforesaid,shallbe made upon such terms as may be agreed upon, either before oraftertheuse, betweentheGovernment Department and the registered proprietor with the approval of the Minister of Finance,orasmayindefaultofagreementbedeterminedbythe Court on a reference under section 18.
(4)
TheauthorityofaGovernmentDepartmentinrespectofadesign may be given under this section either before or after the designisregisteredandeitherbeforeoraftertheactsinrespect of which the authority is given are done, and may be given to any person whether or not he is authorised 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, any use of adesignforthesupplytotheGovernmentofanycountryoutsideNewZealand, inpursuance ofany agreementorarrangementbetweenHerMajesty’sGovernmentinNewZealandand theGovernmentofthatcountry,ofarticlesrequiredforthedefenceofthatcountryshallbedeemedtobeauseofthedesign fortheservicesoftheCrown;andthepowerofaGovernment Department or a person authorised by a Government Department underthis section to use a designshall include power
(a)
to sell such articles to the Government of any country in pursuance of any such agreement or arrangement as aforesaid; and
(b)
toselltoanypersonanyarticlesmadeintheexerciseof thepowersconferredbythissectionwhicharenolonger 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. Compare: Registered Designs Act 1949, First Schedule, para 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 respectofwhichanapplicationforregistrationispending,made for the services of the Crown

(a)
byaGovernmentDepartmentorapersonauthorisedby a Government Department under section 16; or
(b)
bytheregisteredproprietororapplicantforregistration

to the order of a Government Department,theprovisionsofanylicence,assignment,oragreementmade, 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 derivestitleandanypersonotherthanaGovernmentDepartment shallbeofnoeffectsofarasthoseprovisionsrestrictorregulate the use of the design, or any model, document, or informationrelatingthereto,orprovideforthemakingofpayments in respect of any such use, or calculated by reference thereto; andthereproductionorpublicationofanymodelordocument inconnectionwiththesaiduseshallnotconstituteaninfringement of any copyright subsisting in the model or document.

(2)
Where an exclusive licence granted otherwise than for royaltiesorotherbenefitsdeterminedbyreferencetotheuseofthe design is in force under the registered design, then,
(a)
in relation to any use of the design which, but for the provisions of thissectionandsection16,wouldconsti tute an infringement of the rights of the licensee, sub section (3) of section 16 shall have effect as if for the referenceto the registered proprietorthere were substituted a reference to the licensee; and
(b)
in relation to any use of the design by the licensee by virtue of an authority given under section 16, that sec tionshallhaveeffectasifsubsection(3)ofthatsection were omitted.
(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 , subsection (3) of that section shall have effect as if thereferencetotheregisteredproprietorincludedareferencetotheassignor,andanysumpayablebyvirtueof that subsection shall be divided between the registered proprietor and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the Court on a reference under section 18; and
(b)
inrelationtoanyuseofthedesignmadefortheservices oftheCrownbytheregisteredproprietortotheorderof aGovernmentDepartment,subsection(3)of section16 shall have effect as if that use were made by virtue of an authority given under that subsection.
(4)
Where, under subsection (3) of section 16, payments are re quiredtobemadebyaGovernmentDepartmenttoaregistered proprietor in respect of any use of a design, any person being the holder of an exclusive licence under the registered design (notbeingsuchalicenceasismentionedinsubsection(2))authorising him to make that use of the design shall be entitled to recover from the registered proprietor such part (if any) of those payments as may be agreed upon between that person and the registered proprietor, or as may in default of agree ment be determined by the Court under section 18 to be just having regard to any expenditure incurred by that person
(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,

andif,atanytimebeforetheamountofanysuchpaymenthas been agreed upon between the Government Department and theregisteredproprietor,thatpersongivesnoticeinwritingof hisinteresttotheDepartment,anyagreementastotheamount ofthatpaymentshallbeofnoeffectunlessitismadewithhis consent.

(5) In this paragraph exclusive licence means a licence from the registered proprietor which confers on the licensee, or on the licenseeandpersonsauthorisedbyhim,totheexclusionofall other persons (including the registered proprietor), any right in respect of the registered design. Compare: Registered Designs Act 1949, First Schedule, para 2 (UK)

18 Reference of disputes as to Crown use

(1)
Any dispute as to the exercise by a Government Department or a person authorised by a Government Department of the powers conferred by section 16, or as to terms for the use of a design for the services of the Crown thereunder,or as to the right of any person to receive any part of a payment made in pursuanceofsubsection(3)ofthatsection,maybereferredto theCourtbyeitherpartytothedisputeinsuchmannerasmay be prescribed by rules of Court.
(2)
In any proceedings under this section to which a Government Department is a party, the Department may,
(a)
iftheregisteredproprietorisapartytotheproceedings, apply for cancellation of the registration of the design uponanygrounduponwhichtheregistrationofadesign 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)
Ifinsuchproceedingsasaforesaidanyquestionariseswhether adesignhasbeenrecordedorappliedasmentionedin section 16 , and the disclosure of any document recording the design, or of any evidence of the application thereof, would in the opinionoftheDepartmentbeprejudicialtothepublicinterest, the disclosure may be made confidentially to counsel for the otherpartyortoanindependentexpertmutuallyagreedupon.
(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 haveregard toany benefitorcompensationwhichthat person or any person from whom he derives title may have received,

19

or may be entitled to receive, directly or indirectly from any Government Department inrespect 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 factarisingthereintobereferredtoaspecialorofficialreferee oranarbitratoronsuchtermsastheCourtmaydirect;andreferencestotheCourtintheforegoingprovisionsofthissection shall be construed accordingly. Compare: Registered Designs Act 1949, First Schedule, para 3 (UK)

19 Special provisions as to Crown use during emergency

(1) During any period of emergency within the meaning of this sectionthepowersexercisableinrelationtoadesignbyaGovernmentDepartment,orapersonauthorisedbyaGovernment Department under section 16, shall include power to use the design for any purpose which appears to the Department necessary or expedient

(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 communityareavailableforuse,andareused,inamanner bestcalculated to serve the interests of thecommunity; or
(g)
for assisting the relief of suffering and the restoration anddistributionofessentialsuppliesandservicesinany partoftheCommonwealthoroftheRepublicofIreland or in any foreign countries that are in grave distress as a result of war; or
(h)
forprovidingorsecuringsuppliesandservicesrequired forthedefenceofanypartoftheCommonwealthorfor
the maintenance or restoration of peace and security in anypartoftheworld,orforanymeasuresarisingoutof a breach or apprehended breach of peace in any part of the world; or
(i)
forpreventingsuppliesorservicesbeingdisposedofin 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 to the services of the Crown shall be construed as including a reference to the purposes aforesaid.

(2)
Inthissectiontheexpressionperiodofemergencymeansany periodbeginningonsuchdateasmaybedeclaredbyOrderin CouncilpublishedintheGazette tobethecommencement,and ending on such date as may be so declared to be the termination,ofaperiodofemergencyforthepurposeofthissection.
(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. Compare: Registered Designs Act 1949, First Schedule, para 4 (UK)

International arrangements

20 Orders in Council as to convention countries Forthepurposeofgivingeffecttoanyinternationalagreement orarrangementtowhichNewZealandisapartyorthatapplies toNewZealand,theGovernor-GeneralmaybyOrderinCouncil declare that any entity specified in the order that is a party totheagreementorarrangementortowhichtheagreementor arrangementapplies(whetherastate,partofastate,aterritory for whose international relations a state is responsible, a political union,aninternational organisation,orany otherentity) is, for the purposes of all or any of the provisions of this Act, a convention country. Section 20: substituted, on 14 October 1999, by section 2(1) of the Designs

Amendment Act 1999 (1999 No 120).

s 21 Designs Act 1953 Reprinted as at19 April 2011
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 one 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 one
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 certifi
cate 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 rea
sononlyoftheregistrationorpublicationofthedesigninNew
Zealand during the period specified in the proviso to subsec
tion (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 be
tween 2 or more convention countries, is equivalent to
an application duly made in any one of those conven
tion countries; or
(b) in accordance with the law of any convention country,
is equivalent to an application duly made in that con
vention 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 one 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 publicinNewZealandorelsewherebeforeitsunconditional 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.

Compare: Registered Designs Act 1949, s 14 (UK); 1939 No 26 s 55

Section 21(5): inserted, on 2 September 1996, by section 3 of the Designs Amendment Act 1996 (1996 No 118).

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 sectionhasbeenorwillbemadeunderthelawofanyconvention country, he may, by Order in Council, make regulations empoweringthe Commissionertoextendthe timeformaking application under subsection (1) of section 21 for registration ofadesigninrespectofwhichprotectionhasbeenappliedfor in that country in any case where the period specified in the proviso to that subsection expires during a period prescribed by the regulations.
(2)
Regulations made under this section

(a) may, where any agreement or arrangement has been made between Her Majesty’s Government in New ZealandandtheGovernmentoftheconventioncountry for the supply or mutual exchange of information or

23

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,eithergenerallyorinanyclassofcasespecifiedin the regulations, fix the maximum extension which may be granted under this section:
(c)
mayprescribeorallowanyspecialprocedureinconnection with applications made by virtue of this section:
(d)
may empower the Commissioner to extend, in relation toanapplicationmadebyvirtueofthissection,thetime limitedbyorundertheforegoingprovisionsofthisAct for doing any act, subject to such conditions, if any, as may be imposed by or under the regulations:
(e)
may provide for securing t