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
11 Right given by registration 13
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.
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
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
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
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
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
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
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.
(a) a reference in this Act to—
try,— mustbereadasareferencetoapplicationforprotection under the rules of the entity:
(b) areferenceinthisActtothelawofaconventioncountry must be read as a reference to the rules of the entity:
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
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—
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—
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:
(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—
(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
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. |
15 Cancellation of registration
Use of registered designs for services of the Crown
16 Use of registered designs for services of the Crown
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—
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.
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
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—
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.
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—
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
(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:
Compare: Registered Designs Act 1949, s 15 (UK); 1943 No 6 s 5
23 Protection of designs communicated under arrangements with other countries
s 24 | Designs Act 1953 Reprinted as at19 April 2011 |
24 | Regulations under section 22 or section 23 |
Any regulations made under section 22 or section 23, and any | |
order made, direction given, or other action taken under the | |
regulations by the Commissioner, may be made, given, or | |
taken so as to have effect as respects things done or omitted | |
to be done on or after such date, whether before or after the | |
comingintooperationoftheregulationsorofthisAct, asmay | |
be specified in the regulations. | |
Compare: Registered Designs Act 1949, s 37(2) (UK); 1943 No 6 s 7 | |
Register of designs, etc | |
25 | Register of designs |
(1) | There shall be kept at the Patent Office under the control of |
the Commissioner a register of designs, in which there shall | |
beenteredthenamesandaddressesofproprietorsofregistered | |
designs, notices of assignments and of transmissions of regis | |
tered designs, and such other matters as may be prescribed or | |
as the Commissioner may think fit. | |
(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 sealed with the seal of the Patent Office of any entry | |
in the register shall be given to any person requiring them on | |
payment of the prescribed fee. | |
(3) | The register of designs shall be prima facie evidence of any |
mattersrequiredorauthorisedbythisActtobeenteredtherein. | |
(4) | No notice of any trust, whether expressed, implied, or con |
structive, shall be entered in the register of designs, and the | |
Commissioner shall not be affected by any such notice. | |
Compare: Registered Designs Act 1949, s 17 (UK); 1921-22 No 18 ss 55, 118, 119 | |
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. Compare: Registered Designs Act 1949, s 18 (UK); 1921-22 No 18 s 54
27A Application of Personal Property Securities Act 1999
Nothing in sections 25 to 27 affects the operation of the Per sonal Property Securities Act 1999. Section 27A: inserted, on 1 May 2002, by section 191(1) of the Personal
Property Securities Act 1999 (1999 No 126).
No 32 s 7
s 30 | Designs Act 1953 Reprinted as at19 April 2011 |
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, | |
therepresentationorspecimenofadesignregisteredunderthis | |
ActshallbeopentoinspectionatthePatentOfficeonandafter | |
the day on which the certificate of registration is issued. | |
(2) | Inthecaseofadesignregisteredinrespectofanarticleofany |
class prescribed for the purposes of this subsection, no repre | |
sentation or specimen of the design filed in pursuance of the | |
application shall, until the expiration of such period after the | |
day on which thecertificateof registrationis issued as maybe | |
prescribedinrelationtoarticlesofthatclass,beopentoinspec | |
tion at the Patent Office except by the registered proprietor, a | |
person authorised in writing by the registered proprietor, or a | |
person authorised by the Commissioner or by the Court: | |
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 repre | |
sentation or specimen of the first-mentioned design filed in | |
pursuance of the application for registration of that design. | |
(3) | Inthecaseofadesignregisteredinrespectofanarticleofany |
class prescribed for the purposes of subsection (2), the repre | |
sentationorspecimenofthedesignshallnot,duringtheperiod | |
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 authorised by the proviso to that subsec | |
tion, 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 pur | |
suance thereof shall at any time be open to inspection at the | |
Patent Office or be published by the Commissioner. | |
(5) | However, nothing in this section prevents the Commissioner |
from publishing any of the following: |
design that are required to be in the application form. Compare: RegisteredDesigns Act1949, s 22(UK);1921-22 No 18 ss59, 120
Section30(5): added,on19April2011,bysection5oftheDesignsAmendment Act 2010 (2010 No 15).
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 paymentoftheprescribedfee,theCommissionershallinform him whether the design is registered, and, if so, in respect of whatarticles,andwhetheranyextensionoftheperiodofcopyright has been granted, and shall state the date of registration and the name and address of the registered proprietor. Compare: Registered Designs Act 1949, s 23 (UK); 1921-22 No 18 s 60
Legal proceedings and appeals
(1) IfinanyproceedingsbeforetheCourtthevalidityoftheregistrationofadesigniscontested,anditisfoundbytheCourtthat the design is validly registered, the Court may certify that the
s 34 | Designs Act 1953 Reprinted as at19 April 2011 |
validityoftheregistrationofthedesignwascontestedinthose | |
proceedings. | |
(2) | Where any such certificate has been granted, then, if in any |
subsequent proceedings before the Court for infringement of | |
thecopyrightintheregistereddesignorforcancellationofthe | |
registration of the design a final order or judgment is made or | |
given in favour of the registered proprietor, he shall, unless | |
theCourtotherwisedirects, be entitledtohiscostsasbetween | |
solicitor and client: | |
providedthatthissubsectionshallnotapplytothecostsofany | |
appeal in any such proceedings as aforesaid. | |
Compare: Registered Designs Act 1949, s 25 (UK); 1921-22 No 18 s 40 | |
34 | Remedy for groundless threats of infringement |
proceedings | |
(1) | Where any person(whetherentitled to or interested in a regis |
tered 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 copy | |
rightinaregistereddesign,anypersonaggrievedtherebymay | |
bringanactionagainst himforanysuchrelief asismentioned | |
in subsection (2). | |
(2) | Unlessinanyactionbroughtbyvirtueofthissectionthedefen |
dant proves that the actsinrespectof which proceedings were | |
threatened constitute or, if done, would constitute an infringe | |
ment 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 unjustifi | |
able; and | |
(b) aninjunctionagainstthecontinuanceofthethreats;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. | |
Compare: Registered Designs Act 1949, s 26 (UK); 1921-22, No 65 |
(4) Except with the leave of the High Court or of the Court of Appeal,noappealshallliefromanydecisionoftheHighCourt on an appeal against a decision of the Commissioner. Compare: 1921-22 No 18 s 140 Section 35(1): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
Section 35(4): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
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 designanopportunitytobe heardbeforeexercisingadversely totheapplicantanydiscretionvestedintheCommissionerby or under this Act. Compare: Registered Designs Act 1949, s 29 (UK); 1921-22 No 18 s 124
37A Additional provisions for extending time limits
Section 37A: inserted, on 20 October 1972, by section 3 of the Designs Amendment Act 1972 (1972 No 53).
s 39 | Designs Act 1953 | Reprinted as at19 April 2011 |
proceedings or appeal, and in default of such security being given may treat the application or appeal as abandoned. Compare: Registered Designs Act 1949, s 30 (UK); 1921-22 No 18 ss 45, 127 | ||
39 | Evidence before Commissioner | |
(1) | Subject to regulations made under this Act, the evidence to be given in any proceedings before the Commissioner under thisActmaybegivenbyaffidavitorstatutorydeclaration;but the Commissioner may if he thinks fit in any particular case take oral evidence instead of or in addition to such evidence | |
asaforesaid, andmayallow anywitness to becross-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 1953. | |
(3) | AnyevidencegivenonoathbeforetheCommissionershallbe deemed to be given in a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961. | |
(4) | Section 111 of the Crimes Act 1961 shall apply to every affidavit and statutory declaration made for the purposes of this Act. | |
Compare: Registered Designs Act 1949, s 31 (UK); 1921-22 No 18 s 129 | ||
Section 39(3): amended, on 1 January 1962, by section 412(2) of the Crimes Act 1961 (1961 No 43). | ||
Section 39(4): amended, on 1 January 1962, by section 412(2) of the Crimes Act 1961 (1961 No 43). | ||
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 designorany proceedingsrelatingthereto,theactmay, unless |
otherwiseprescribed, bedonebyorto anagentofthat person duly authorised in the prescribed manner. Compare: 1921-22 No 18 s 136
(1) For the purposes of this section, unless the context otherwise
requires,— deceasedproprietor meansaregisteredproprietorofanydesignwhohasdied,whetherbeforeorafterthecommencement ofthisAct;andincludesanyapplicantfortheregistrationofa design who has died before it is registered, whether before or after the commencement of this Act
qualified person, in relation to any deceased proprietor, means a person who satisfies the Commissioner—
(c) [Repealed]
(d) thattheinterestsofthecreditorsofthedeceasedproprietor,andofallpersonsbeneficiallyinterestedunderhis will or on his intestacy, will be adequately safeguarded if the Commissioner of Designs registers the qualified person as the proprietor of the design.
(4) Nothing in sections 70 or 73 of the Administration Act 1969 shall be deemed to restrict the operation of this section. Compare: 1947 No 37 s 5 Section41(1) qualifiedperson: amended,on21July1955,pursuanttosection 89(7) of the Estate and Gift Duties Act 1955 (1955 No 105).
Section 41(1) qualified person paragraph (c): repealed, on 24 May 1999, by section 17 of the Estate Duty Repeal Act 1999 (1999 No 64).
Section 41(4): amended, on 1 January 1971, by section 84(1) of the Administration Act 1969 (1969 No 52).
Restoration of lapsed copyright in registereddesign
Heading: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Act 2010 (2010 No 15).
Act 2010 (2010 No 15).
Restoration of design applications
Heading: inserted, on 19 April 2011, by section 6 of the Designs Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Amendment Act 2010 (2010 No 15).
Act 2010 (2010 No 15).
fence and shall be liable on conviction on indictment to imprisonment for a term not exceeding 2 years.
(2) [Repealed] Compare: Registered Designs Act 1949, s 34 (UK);1921-22 No18 s 143(1) Section 42(2): repealed, by section 214(1) of the Summary Proceedings Act 1957.
(4)
Supplemental
45
taken on that day,the act or proceeding shall be deemedtobe in time if done or taken on the next day on which the Patent Office is open. Compare: Registered Designs Act 1949, s 39 (UK); 1921-22 No 18 s 133
Section45(1): substituted,on10December1976,bysection2(1)oftheDesigns Amendment Act 1976 (1976 No 86).
Section45(2): amended, on10December1976, bysection2(2)ofthe Designs Amendment Act 1976 (1976 No 86).
45A Closing of Patent Office at short notice
Amendment Act 1976 (1976 No 86).
(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 witha request to the Commissionerunder 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)):
s 47 | Designs Act 1953 | Reprinted as at19 April 2011 | |
(3) | [Repealed] | ||
Compare: Registered Designs Act 1949, s 36 (UK); 1921-22 No 18 s 138 | |||
Section 46(2)(ca): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15). | |||
Section 46(2)(cb): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15). | |||
Section 46(2)(cc): inserted, on 20 April 2010, by section 7 of the Designs Amendment Act 2010 (2010 No 15). | |||
Section46(3): repealed,on19December1989,bysection11oftheRegulations (Disallowance) Act 1989 (1989 No 143). | |||
47 | Fees | ||
(1) | Thereshallbepaidinrespectoftheregistrationofdesignsand | ||
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 | |||
underthis Act, maybe refundedbytheCommissioner, and all | |||
money so refunded shall be paid out of public money without | |||
further appropriation than this Act. | |||
Compare: Registered Designs Act 1949, s 40 (UK); 1921-22 No 18 s 117 | |||
Section47(1): amended,on1April1964, pursuantto section 4(4)ofthePublic Revenues Amendment Act 1963 (1963 No 46). | |||
Section47(2): amended,on1April1964, pursuantto section 4(4)ofthePublic Revenues Amendment Act 1963 (1963 No 46). | |||
48 | Service of notices, etc, by post | ||
(1) | Any notice required or authorised to be given by or under this | ||
Act, and any application or other document so authorised or | |||
required to be made or filed, may be given, made, or filed by | |||
sendingitbypostinaletteraddressedtothepersonconcerned | |||
at his usual or last known address. | |||
(2) | Where any notice is sent by the Commissioner to any person | ||
by post as aforesaid, the notice shall be deemed to have been | |||
givenatthetimewhenthelettercontainingitwouldhavebeen | |||
delivered in the ordinary course of post. | |||
Compare: Registered Designs Act 1949, s 41 (UK); 1921-22 No 18 s 132 |
The Commissioner of Patents shall, in his annual report with respect to the operation of the Patents Act 1953, include a re port with respect to the operation of this Act as if it formed part of or was included in that Act. Compare: Registered Designs Act 1949, s 42 (UK); 1921-22 No 18 s 128
This Act shall be in force in Tokelau.
Section 50: amended, on 9 December 1976, pursuant to section 3(8) of the Tokelau Amendment Act 1976 (1976 No 122).
NothinginthisActshallbeconstruedasauthorisingorrequiring the Commissioner to register a design the use of which would, in his opinion, be contrary to law or morality. Compare: Registered Designs Act 1949, s 43(1) (UK); 1939 No 26 s 71
49
of section 10 of this Act shall not apply in relation to that de sign or any registration of that design.
(5) AnydocumentreferringtoanyenactmentrepealedbythisAct shallbeconstruedasreferringtothecorrespondingenactment of this Act. Compare: Registered Designs Act 1949, s 48 (UK)
Amendment(s) incorporated in the Act(s)
Amendment(s) incorporated in the Act(s)
Amendment(s) incorporated in the Act(s)
Amendment(s) incorporated in the Act(s)
Patents, Designs, and Trade Marks Amendment Act 1947 (1947 No 37)
Amendment(s) incorporated in the Act(s)
1 General
2 About this eprint
3 List of amendments incorporated in this eprint (most recent first)
Notes
This is an eprint of the Designs Act 1953. The eprint incorporates all the amendments to the Act as at 19 April 2011. The list of amendments at the end of these notes specifies all the amendments incorporated into this eprint since 3 September 2007.
Relevantprovisionsofany amending enactments thatcontain transitional, savings, or application provisions that cannot be compiled in the eprint are also included, after the principal enactment, in chronological order.
This eprint has not been officialised. For more information about eprints and officialisation, please see http://www.pco.parliament.govt.nz/eprints/ .