Design applications with single views allowed

Saturday 17th January 2009

A recently published assistant commissioner’s decision has confirmed that a registered design in New Zealand may include only a single view, or minimal views, of the article to which the design is to be applied.

The decision considered five design applications, nos 405512, 406613, 406401, 406343 and 4077794 all in the name of Merz & Krell GmbH & Co KGaA. The applications related to writing utensils.

During prosecution the examiner raised an objection under Regulation 25 of the New Zealand Design Regulations 1954, which provides that “...representations of the design, in a form satisfactory to the Commissioner…” must be supplied.

In the examiner’s view the representations filed were insufficient to show the three-dimensional shape and configuration of the designs.

The applicant requested a hearing on the acceptability of the representations and on receiving a favourable decision requested, in the public interest, that the decision be made open to public inspection (which it would not have been otherwise).

At the hearing the applicant argued that the purpose of the representations accompanying a design application is to show the extent of the design protection afforded to the proprietor after registration, rather than to show the article in its entirety, relying on the decision of the UK Registered Designs Appeal Tribunal in Ford Motor Company Limited’s Design Application [1972] RPC 320. It submitted that while this decision was not binding on IPONZ, it was at least highly persuasive, due to it relating to the equivalent provisions of the UK Designs Rules 1949. In Ford’s Application a design was allowed to proceed with only a front view of the article, in that case an automotive wheel.

The applicant also argued that to insist on further views could endanger the claim to priority from the original German  applications which did not have such views, referring to Dehyle’s Design Applications [1982] RPC 626.

The assistant commissioner concluded that the representations in question were comparable with those allowed in Ford’s Application, and as such were acceptable.

This therefore represents an important affirmation for New Zealand design applicants that while the representations must fully show the design for which protection is sought, this does not necessarily mean showing the entire article, and that even a single view may be sufficient for this purpose.

This article was published in Managing Intellectual Property, December 2008.

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