World Intellectual Property Organization

New Zealand

Designs Amendment Act 2010

 

 


Designs Amendment Act 2010

Public Act 2010 No 15 Date of assent 19 April 2010 Commencement see section 2

Contents

Page 1 Title 2 2 Commencement 2 3 Principal Act amended 2 4 Period of copyright 2 5 Inspection of registered designs 2 6 New headings and sections 41A to 41J inserted 3

Restoration of lapsed copyright in registered design

41A Restoration of lapsed copyright in registered 3 design 41B Persons who may make request for restoration of 3 copyright 41C When request for restoration of copyright may be 4 made 41D Commissioner’s consideration of whether prima 4 facie case has been made out for restoration 41E Notice of opposition and reasonable opportunity 4 to be heard 41F Order to be made on payment of unpaid fees 5

Restoration of design applications

41G Request for restoration of abandoned design 6 application 41H When request for restoration of application may 6 be made

s 1 Designs Amendment Act 2010 2010 No 15
7 8 41I Notice of opposition 41J Commissioner to determine matter Regulations Consequential amendment to Copyright Act 1994 7 7 8 8

The Parliament of New Zealand enacts as follows:

1 Title This Act is the Designs Amendment Act 2010.
2 (1) Commencement This Act (except section 7) comes into force on the earlier of the following: (a) the day that is 12 months after the date on which this Act receives the Royal assent: (b) a date to be appointed by the Governor-General by Order in Council.
(2) Section 7 comes into force on the day after the date on which this Act receives the Royal assent.
3 Principal Act amended This Act amends the Designs Act 1953.
4 (1) (2) Period of copyright Section 12(2) is amended by omitting “prescribed formand substituting “prescribed manner”. Section 12 is amended by adding the following subsection:

“(3) Subsection (2) is subject to sections 41A to 41F (which provide for the restoration of lapsed copyright in a registered design).

Inspection of registered designs

Section 30 is amended by adding the following subsection: “(5) However, nothing in this section prevents the Commissioner from publishing any of the following: “(a) thedateofanapplicationfortheregistrationofadesign:

“(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.

New headings and sections 41A to 41J inserted

Thefollowingheadingsandsectionsareinsertedafter section

41 :

Restoration of lapsed copyright in registereddesign

41A Restoration of lapsed copyright in registered design

“(1) This section applies if the period of copyright in a registered designhasendedbyreasonofafailuretomakeanapplication under section 12(2) or to pay the prescribed fee under section 12(2) (or both).

“(2) The Commissioner may, on a request made in the prescribed manner and in accordance with sections 41B to 41F, by order extendtheperiodofcopyrightinaregistereddesignforasecondorthirdperiodof5yearsasprovidedforinsection12(2)if the Commissionerissatisfied thatthe relevant failuretocomply with section 12(2) was unintentional.

“(3) Arequestforanorderunderthissectionmustcontainastatement that fully sets out the circumstances that led to the relevant failure to comply with section 12(2).

“(4) TheCommissionermayrequirethepersonwhomakestherequest to provide any further evidence that the Commissioner thinks fit.

“(5) AnappealtotheCourtmaybemadefromanydecisionofthe Commissioner under this section or sections 41B to 41F.

41B Persons who may make request for restoration of copyright

“(1) Arequestforanorderundersection41Amaybemadebythe person who was the registered proprietor or, if that person is deceased, by that person’s personal representative.

“(2) If there were 2 or more registered proprietors, the request for an order under section 41A may, with the leave of the Commissioner, be made by 1 or more of them without joining the others.

41C When request for restoration of copyright may be made

“(1) A request for an order under section 41A may only be made within the prescribed period.

“(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 thatfully sets outthe circumstances that causedthe delayand the reasons why the delay is not undue.

“(4) TheCommissionermayrequirethatpersontoprovideanyfurther evidence that the Commissioner thinks fit.

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, give the person who made the request a reasonable opportunity to be heard if the Commissionerisnotsatisfiedthataprimafaciecasehasbeen made out for an order under section 41A.

“(2) TheCommissionermustpublisharequestmadeinaccordance with sections 41A to 41C in the Journal if the Commissioner is satisfied that a prima facie case has been made out for an order under section 41A.

41E Notice of opposition and reasonable opportunity to be heard

“(1) Any person may, within the prescribed period, give notice to theCommissionerofoppositiontoanorderbeingmadeunder section 41A on either or both of the following grounds: “(a) that the relevant failure to comply with section 12(2) was not unintentional: “(b) if the period within which a request for an order under section 41A may be made is extended under section 41C, that the delay in making the request was undue.

“(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) TheCommissionermustgivethepersonwhomadetherequest and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.

41F Order to be made on payment of unpaid fees

“(1) If the Commissioner has published a request under section 41D, he or she must make an order under section 41A in accordancewiththerequestaftertheprescribedperiodforgiving notice of opposition if“(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) Anorderfortheextensionoftheperiodofcopyrightinaregistered design“(a) maybemadesubjecttoaconditionrequiringtheregistration 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 wayofcontractorotherwisetoavailthemselves,ofthe design between the date when the period of copyright ended and the date on which the request is published under section 41D; and “(c) may be made subject to any other conditions that the Commissioner thinks fit.

“(3) Ifanyconditionofanorderunderthissectionisnotcomplied 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.

Restoration of design applications

41G Requestforrestorationofabandoneddesignapplication

“(1) This section applies if an application for the registration of a design is abandoned under section 7(4).

“(2) TheapplicantmaymakearequesttotheCommissionerinthe 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) TheCommissionermust,afterconsideringarequest,givethe 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 beingabandoned under section7(4) was unintentional.

“(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) was unintentional.

“(6) AnappealtotheCourtmaybemadefromanydecisionofthe Commissioner under this section or sections 41H to 41J.

41H Whenrequestforrestorationofapplicationmaybemade

“(1) A request under section 41G may only be made within the prescribed period.

“(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), providetheCommissionerwithastatementthatfullysetsoutthe 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.

41I Notice of opposition

“(1) Any person may, within the prescribed period, give notice to theCommissionerofoppositiontoanorderbeingmadeunder section 41J on either or both of the following grounds: “(a) that the default or neglect on the part of the applicant that resulted in the application being abandoned under section 7(4) was not unintentional: “(b) if the period within which a request under section 41G may be made is extended under section 41H, that the delay in making the request was undue.

“(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 areasonableopportunitytobeheardbeforetheCommissioner decides the case.

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 forcomplyingwiththerequirementsimposedontheapplicant by or under this Act to a period that is specified in the order if the Commissioner is satisfied that“(i) thedefaultorneglectonthepartoftheapplicant that resulted in the application being abandoned under section 7(4) was unintentional; and “(ii) iftheperiodwithinwhicharequestundersection 41G may be made was extended under section 41H, there was no undue delay in making the request; or “(b) dismiss the request.

“(2) Anorderunderthissectionmustcontain,orbesubjectto,the provisionsthatare prescribedfortheprotectionorcompensation of persons who availed themselves, or took definitesteps bywayofcontractorotherwisetoavailthemselves,ofthedesignbetweenthedatewhentheapplicationbecameabandoned and the date on which the request is published under section 41G.

“(3) TheCommissionermustpublishinthe Journal themakingof

an order under subsection (1) after that order is made.
7 Regulations
Section 46(2) is amended by inserting the following para
graphs after paragraph (c):
“(ca) for prescribing the manner in which applications may
be made under section 12(2):
“(cb) for regulating the procedure to be followed in connec
tion with a request to the Commissioner under sections
41A to 41F (including providing for when and how re
questsmustbemade,theperiodforgivingnoticeofop
position, penalties payable under section 41F, and the
matters referred to in section 41F(2)(b)):
“(cc) for regulating the procedure to be followed in connec
tion with a request to the Commissioner under sections
41G to 41J (including providing for when and how re
questsmustbemade,theperiodforgivingnoticeofop
position,andthemattersreferredtoinsection41J(2)):”.
8 Consequential amendment to Copyright Act 1994
(1) This section amends the Copyright Act 1994.
(2) Section 74 is amended by adding the following subsection:

“(4) If the registered protection in New Zealand of a design that has ceased to have effect is restored by an order made under section41AoftheDesignsAct1953,nothingdoneundersubsection (1) in the period beginning with the day on which the protection ceased to have effect and ending with the close of thedayonwhichtheorderismadeconstitutesaninfringement ofcopyrightinanyliteraryorartisticworkorcopyofthework forming part of the design.

Legislative history

30 March 2010 Divided from Regulatory Improvement Bill (Bill 298–2) by committee of the whole House, third reading

19 April 2010 Royal assent

This Act is administered by the Ministry of Economic Development.

Wellington, New Zealand: Published under the authority of the New Zealand Government—2010

 

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