Registered designs offer protection for the appearance of a product, or part of a product. The registered design system in most countries is less complex than the patent system, and this often leads to a view that registered designs are easier or simpler to obtain. However, whilst the application process is usually less involved than the patent system, there are traps which may remain hidden until too late.
Is it New?
Most countries require a design to be new. This generally means that the design is not available to the public anywhere in the world before a design application is filed. In New Zealand a design is considered ‘new’ if it is not available to the public in New Zealand before a design application is filed. So in New Zealand, the test for novelty is more favourable, in that disclosure of the design outside of New Zealand may not prejudice a design application here.
In most cases, disclosure of a design on the internet will count as making the design available to the public in New Zealand provided that someone in New Zealand could have accessed the information.
Some countries provide a ‘grace period’ in which a designer can publish his design before filing a design application in that country. This can be useful if the designer would like to gauge opinion on his design, or perhaps generate some early sales profit. This can also be useful in the case of an inadvertent or accidental publication of the design, such as by an enthusiastic sales person or distributor. One example of such a grace period is in the EU, where a 12 month period exists in which a Community (EU) design application can still be filed after a first public disclosure by the designer.
Whilst some countries provide a grace period, some countries do not. For example, New Zealand design law does not provide such a general grace period. Many other countries also do not. If relying on a first application filed using the grace period of that country, any subsequent applications filed in other countries, which do not provide a grace period, may be invalid as not being new over the initial publication of the design by the designer.
For example, a European application filed using the grace period provisions in Europe would be considered new and therefore valid, whereas a subsequent application in New Zealand, based on the European application, would be considered invalid as no equivalent grace period exists here. In many countries, examination of design applications is brief, and this problem may therefore not be identified until the time comes to enforce the registered design against third parties some time later. In New Zealand, design applications are examined substantively, and the early publication of the design by the designer may be identified during examination and significant objections raised.
It is therefore important, if possible, to have at least a first design application on file before a public disclosure of the design in question. Relying on grace periods, whilst seemingly useful in the country concerned, can lead to design protection not being available, or design registrations not being valid, in countries such as New Zealand which do not have a period of grace.
It is often the case that prior publications of a design do not show all features of the design. Consequently, it is often possible to obtain some protection and this should not be dismissed outright.