These regulations may be cited as the Designs Regulations 1954.

These regulations shall come into force immediately after the commencement of the Designs Act 1953.

This subclause contained the table of contents.

In these regulations, unless the context otherwise requires,—

A reference to a numbered form is a reference to the designs form so numbered in Schedule 2.

The fees to be paid in respect of the registration of designs and applications therefor and in respect of other matters relating to designs arising under the Act shall be those prescribed in Schedule 1.

The fees prescribed by these regulations are exclusive of goods and services tax.

Fees and charges payable under regulation 3 shall be paid at the time of making an application or request or upon giving notice or filing any instrument in respect of which a fee or charge is payable under these regulations.

Fees may be paid—

The Commissioner may delay taking an action until the fee that must be paid for that action has been received.

Payments sent by mail to the Commissioner shall be at the risk of the sender.

In this Part,—

This regulation applies to a requirement in these regulations for—

The requirement is met by providing the information or document, request, communication, or correspondence to the Commissioner—

This regulation applies to a requirement in these regulations for information or a document—

The requirement is met—

If a person provides an electronic reproduction in accordance with subclause (2)(b), the person must—

A requirement in these regulations for the Commissioner to give information or a document, or to communicate or correspond in any way (whether in writing or otherwise), is met by providing the information or document, communication, or correspondence—

The Commissioner must notify the recipient of information or a document, communications, or correspondence provided in accordance with subclause (1)(a) if—

Nothing in regulation 8A(2)(a) applies to—

Nothing in this Part overrides regulations 13(2), 17, or 18.

Except as set out in subclauses (1) and (2), this Part applies despite anything to the contrary in these regulations.

The forms set out in Schedule 2 shall be used in all cases to which they are applicable, and may be modified as directed by the Commissioner.

Subject to any directions that may be given by the Commissioner in any particular case, all applications, notices, papers having representations affixed, and other documents lodged under the Act or these regulations as a paper document shall be upon strong paper, and, except where otherwise required, on one side only, of approximately A4 international size, and having on the left hand part thereof a margin of approximately 5 cm.

All electronic reproductions lodged or given under the Act or these regulations must be able to be readily printed on one side only of paper of approximately A4 international size, and having on the left hand part of the paper a margin of approximately 5 cm.

A document lodged by a firm must be signed by a partner or any other person who satisfies the Commissioner that he or she is authorized to sign the document on behalf of the partnership.

A document lodged by a body corporate shall be signed by a director or by the secretary of the body corporate or by any other person who satisfies the Commissioner that he is authorized to sign the document.

An application for registration and all other communications between an applicant and the Commissioner, and between the registered proprietor of a design and the Commissioner or any other person, may be made by or through an agent.

Any such applicant, registered proprietor, or other person may appoint an agent to represent him in any proceeding or matter by signing and lodging with the Commissioner an authority to that effect in form 1, or in such other form as the Commissioner may deem sufficient.

The authority must be lodged as an electronic reproduction or a paper document.

In case of any such appointment, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so appointing him, and all communications directed to be made to that person in respect of the proceeding or matter may be addressed to the agent and all attendances upon the Commissioner relating thereto may be made by or through the agent.

The Commissioner shall refuse to recognize as agent in respect of any proceedings under the Act a person who neither resides nor carries on business in New Zealand or Australia.

In any particular case the Commissioner may, if he thinks fit, require the personal signature or presence of an applicant or other person.

Every applicant in any proceedings to which these regulations relate, and every person registered as proprietor of, or as having an interest in, a registered design, shall furnish to the Commissioner, in addition to his full residential or business address, an address for service in New Zealand or in Australia.

The address for service may be treated, for all purposes connected with the proceedings or design, as the actual address of the applicant or person and shall, in the case of a registered proprietor, be entered on the register as the address for service of the proprietor.

Any written communication addressed to an applicant in any proceedings, or to any person registered as proprietor of or as having an interest in a registered design, at his address for service shall be deemed to be properly addressed.

Where an address for service has not been furnished to the Commissioner, the Commissioner may treat the residential or business address as the address for service, unless the residential or business address is outside of New Zealand or Australia, in which case the Commissioner need not proceed with the examination of the application until an address for service in New Zealand or Australia has been furnished to him.

An application for registration of a design shall be signed by the applicant for registration or by his agent.

An application for registration of a design shall be in form 2 or form 3, or in the case of a design to be applied to a set of articles in form 4 or form 5, as the case may be.

An applicant for the registration of a design may request the Commissioner to delay issuing a certificate of registration for that application for a period of up to 15 months from the date on which the application was made.

The Commissioner may comply with that request.

In case of the death of any applicant for the registration of a design after the date of his application and before registration of the design has been effected, the Commissioner may, on being satisfied of the applicant’s death, enter in the register, in place of the name, address, and nationality of the deceased applicant, the name, address, and nationality of the person owning the design on that ownership being proved to the satisfaction of the Commissioner.

If the same design is to be registered in respect of more than 1 article, a separate application must be made in respect of each article.

Each application must be treated as a separate and distinct application.

Every application shall state the article to which the design is to be applied, and that the applicant claims to be the proprietor thereof.

Except in the case of an application to register a design to be applied to a textile article, to wallpaper, or to lace, the application shall further be accompanied by a statement of the features of the design for which novelty is claimed.

If the application is for the registration of a design which has already been registered in respect of 1 or more articles, or consists of a registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, and it is desired to claim the protection of section 8 of the Act for the application, it shall contain the number or numbers of the registration or registrations already effected.

An application for the registration of a design must be accompanied by a representation of the design.

If the design is to be applied to a set of articles, the representation must show the design as applied to each different article included in the set.

The Commissioner may at any time before registration require additional representations.

Representations must be given to the Commissioner—

Each representation must clearly and unambiguously show the novel design features of the design as applied to the article.

Each digital image may be in black and white, grey scale, or colour.

Each digital image must be—

Where words, letters, or numerals appear in the design but are not of the essence of the design, they shall be removed from the representations. Where they are of the essence of the design, the Commissioner may require the insertion of a disclaimer of any right to their exclusive use.

Each representation of a design which consists of a repeating surface pattern shall show the complete pattern and a sufficient portion of the repeat in length and width.

Where a portrait of Her Majesty or of any member of the Royal Family, or a reproduction of the armorial bearings, insignia, orders of chivalry, decorations, or flags of any country, city, borough, town, place, society, body corporate, institution, or person, appears on a design, the Commissioner, before proceeding to register the design, shall, if he so requires, be furnished with a consent to the registration and use of the portrait or reproduction from such official or other person as appears to the Commissioner to be entitled to give consent, and in default of such consent he may refuse to register the design.

Where the name or portrait of a living person appears on a design, the Commissioner shall be furnished, if he so requires, with consent from the person before proceeding to register the design. In the case of a person recently dead, the Commissioner may call for consent from his legal representative before proceeding with the registration of a design on which the name or portrait of the deceased person appears.

There shall be excluded from registration under the Act designs to be applied to any of the following articles, namely:

An application for registration under section 21 of the Act shall contain a declaration that the application in a convention country upon which the applicant relies is the first application made in a convention country in respect of the design, whether by the applicant or by any person of whom he claims to be the legal representative or assignee, and shall specify the convention country in which the foreign application was made, or is deemed under section 21(4) of the Act to have been made, and the official date thereof.

In addition to the representations lodged with every convention application there shall be lodged with the application, or within 3 months thereafter, a copy of the representation of the design filed or deposited in respect of the first application in a convention country, duly certified by the official chief or head of the Designs Office of the convention country, or otherwise verified to the satisfaction of the Commissioner.

If any certificate or other document relating to the application is in a foreign language, a translation thereof shall be annexed thereto and verified by statutory declaration or otherwise to the satisfaction of the Commissioner.

Save as provided by regulation 34, all proceedings in connection with a convention application shall be taken within the times and in the manner prescribed by these regulations.

If upon consideration of the application it appears to the Commissioner that the design is not registerable under the Act, he shall state his objections to the applicant in writing, and unless within 1 month thereafter the applicant applies for a hearing, the applicant shall be deemed to have withdrawn his application.

If the applicant applies for a hearing, the decision of the Commissioner at the hearing shall be communicated to the applicant in writing.

If the applicant desires to appeal from the Commissioner’s decision, he shall, within 1 month from the date of the decision, apply to the Commissioner in form 6 requesting him to state in writing the grounds of, and the materials used by him in arriving at, his decision. Upon receipt of any such application, the Commissioner shall send to the applicant such statement as aforesaid in writing, and the date when the statement is sent shall be deemed to be the date of the Commissioner’s decision for the purpose of an appeal.

The time prescribed for the purposes of section 7(4) of the Act, which relates to non-completion of an application, shall be 12 months from the date of the application:

The certificate of registration of a design shall be in form 8, form 9, form 10, or form 11, whichever is applicable, and may be modified as directed by the Commissioner.

A request under section 41G(2) of the Act for the restoration of an application for the registration of a design that is abandoned must be made within 3 months of the date on which the application is deemed to be abandoned under section 7(4) of the Act.

A notice of opposition under section 41I(1) of the Act must be given to the Commissioner within 2 months of the date on which the request referred to in regulation 40A is published in the Journal in accordance with section 41G(5) of the Act.

Every order under section 41J of the Act must contain or be subject to the provisions prescribed in this regulation.

No action or other proceeding may be commenced or prosecuted, nor any royalties, damages, or account of profits recovered, in respect of a design that a person referred to in section 41J(2) of the Act availed themselves of, or took definite steps to avail themselves of, on the ground that the person has infringed, or infringes, the copyright in the design.

However, subclause (2) applies only to the extent that the person—

To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the date of registration of the design.

An application under section 12(2) of the Act for an extension of the period of copyright for a second or a third period of 5 years must be made in form 12.

An application for extension of the period of copyright in a design registered by virtue of section 8 of the Act shall be made before the expiration of the period of copyright in the original registered design current at the date of lodging the application under section 8 of the Act.

Where an application is made for registration of a design by virtue of section 8 of the Act, and the period of copyright in the original registered design current at the date of lodging the said application expires before the completion of that application, registration shall not be effected until the copyright in the original registered design has been extended for a further period and an application has been lodged for the extension of the period of copyright in the design to be registered.

A request for an extension of time for payment of any fee payable for an extension of the period of copyright shall be made in form 14.

A request under section 41A(2) of the Act for the restoration of copyright in a registered design that has ended must be made within 12 months of the date on which the copyright ended.

A notice of opposition under section 41E(1) of the Act must be given to the Commissioner within 2 months of the date on which the request referred to in regulation 44A is published in the Journal in accordance with section 41D(2) of the Act.

Every order under section 41A of the Act must contain or be subject to the provisions prescribed in this regulation.

No action or other proceeding may be commenced or prosecuted, nor any royalties, damages, or account of profits recovered, in respect of a registered design that a person referred to in section 41F(2)(b) of the Act availed themselves of, or took definite steps to avail themselves of, on the ground that the person has infringed, or infringes, the copyright in the design.

However, subclause (2) applies only to the extent that the person—

To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the date on which the period of copyright in the registered design ended as set out in section 41A of the Act (including after the date on which the period of copyright is extended).

An application for the registration of the title of any person becoming entitled by assignment, transmission, or operation of law to a registered design or to a share in a registered design, or becoming entitled as mortgagee, licensee, or otherwise to any interest in a registered design, shall be made,—

Application may be made in form 17 for entry in the register of notification of any other document purporting to affect the proprietorship of a registered design.

An official or certified copy of any instrument or other document which is referred to in an application under regulation 45 and is a matter of record in New Zealand shall be produced to the Commissioner with the application.

Any other document so referred to shall, unless the Commissioner otherwise directs, be produced to him with the application, and a certified copy of any such document shall be filed.

An application under regulation 45(1) shall contain the name, address, and nationality of the person claiming or stated to be entitled, together with full particulars of the instrument, if any, under which title is claimed or given.

Where the name of a person is entered in the register as mortgagee or licensee, that person may, on making an application for the purpose in form 18, have a note entered in the register that he no longer claims to be mortgagee or licensee, as the case may be.

An application by the registered proprietor of a design for the alteration of a name, nationality, address, or address for service entered on the register in respect of his design shall be made in form 19 or form 20, as the case may be.

Before acting on a request to alter a name or nationality the Commissioner may require such proof of the alteration as he thinks fit.

If the Commissioner is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.

Where the registered proprietor of a design desires to cancel his registration, he shall make the application in form 21.

An application under section 41 of the Act for leave to dispense with the production of probate or letters of administration shall be made in form 22, and shall be supported by such evidence as may be required by the Commissioner.

A request under section 29(3) of the Act for the correction of a mistake in the register, in any certificate of registration, or application for the registration of a design, or any document filed in pursuance of such an application, or in proceedings in connection with any design, shall be made in form 23.

Where the Commissioner requires notice of the nature of the proposed correction to be advertised, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Journal, and in such other manner (if any) as the Commissioner may direct.

Any person may, at any time within 1 month from the date of the advertisement in the Journal, give notice to the Commissioner of opposition to the proposed correction in form 24.

Every such notice shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts on which he relies, and the relief which he seeks.

A copy of the notice and of the statement shall be sent by the Commissioner to the person making the request, and the Commissioner may give such directions (if any) as he may think fit with regard to the subsequent procedure.

Where in accordance with section 29(4) of the Act a hearing is appointed, at least 14 days’ notice of the appointment shall be given to the parties and to any other person to whom notice of the proposed correction has been given by the Commissioner.

Where a certificate is required for the purpose of obtaining registration of a design in a country outside New Zealand or of any legal proceeding or other special purpose, as to any entry, matter, or thing which the Commissioner is authorized by the Act or these regulations to make or do, the Commissioner may, on the lodging of a request in form 25, give the certificate, which shall also specify on the face of it the purpose for which it has been issued as aforesaid.

An application under section 26(2) of the Act for a further certificate of registration shall be made in form 26, and shall be accompanied by evidence setting out in full and verifying the circumstances in which the original certificate of registration was lost or destroyed or cannot be produced.

Where any person desires to obtain the information which he is entitled to obtain under section 31 of the Act and can furnish the registration number of the design, he shall apply in form 27, and the Commissioner shall thereafter furnish him with the information aforesaid.

Where the applicant is unable to furnish the registration number of a design, he shall apply in form 28 and furnish to the Commissioner a representation or specimen (in duplicate) of the design applied to an article, and the Commissioner shall thereupon make such search among designs applied to the articles as may be possible, and shall furnish such information as can properly be given.

The Commissioner shall, upon application for the purpose in form 29, accompanied by a representation or specimen (in duplicate) of a design applied to an article, cause a search to be made among registered designs and state whether the design as applied to that article appears to be identical with, or closely to resemble, any registered design applied to that article of which the copyright is still existing.

Where the Commissioner has given a direction under section 9(1) of the Act prohibiting or restricting the publication of a design, the representation or specimen of the design shall not be open to public inspection while the direction remains in force.

The period under section 30(2) of the Act during which a design shall not be open to inspection, except as provided in that section, shall be, as regards designs to be applied to textile articles, 3 years, and as regards designs to be applied to wallpaper and lace, 2 years, from the date of the registration thereof.

An application for the grant of a compulsory licence under section 14 of the Act shall be made in form 30. The application shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the applicant’s interest and the facts upon which he bases his case. Copies of the application and of the statement of case shall be transmitted by the Commissioner to the registered proprietor.

If the registered proprietor desires to oppose the application, he shall, within such time as the Commissioner may allow, lodge a statement fully setting out the grounds on which the application is to be opposed and shall deliver to the applicant a copy thereof.

The applicant shall, within such time as the Commissioner may allow, lodge evidence in support of his case and shall deliver to the registered proprietor a copy thereof.

Within such time as the Commissioner may allow, the proprietor may lodge evidence in answer and shall deliver to the applicant a copy thereof; and within such time as the Commissioner may allow, the applicant may lodge evidence confined to matters strictly in reply and shall deliver to the proprietor a copy thereof.

No further evidence shall be lodged by either party except by leave or on direction of the Commissioner.

On completion of the evidence, or at such other time as he may see fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties at least 10 days’ notice of the appointment.

If either party desires to be heard, he shall give notice to the Commissioner in form 31, and the Commissioner may refuse to hear either party who has not lodged the form prior to the date of the hearing.

In the event of an application for the grant of a compulsory licence being uncontested by the proprietor, the Commissioner, in deciding whether costs should be awarded to the applicant, shall consider whether proceedings might have been avoided if reasonable notice had been given by the applicant to the registered proprietor before the application was filed.

An application for the cancellation of the registration of a design under section 15(2) of the Act shall be made in form 32, and shall be accompanied by a copy thereof and a statement in duplicate setting out fully the nature of the applicant’s interest and the facts on which he relies.

A copy of the application shall be sent by the Commissioner to the registered proprietor, and thereupon the provisions of regulations 62 to 66 shall apply.

In the event of an application for the cancellation of the registration of a design being uncontested by the proprietor, the Commissioner, in deciding whether costs should be awarded to the applicant, shall consider whether proceedings might have been avoided if reasonable notice had been given by the applicant to the registered proprietor before the application was filed.

Where under these regulations evidence is required to be filed, it shall be by statutory declaration or affidavit, unless otherwise expressly provided in these regulations.

The statutory declarations and affidavits required by these regulations, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, and shall be divided into paragraphs consecutively numbered, and each paragraph shall, so far as possible, be confined to one subject.

Every statutory declaration or affidavit shall state the description and true place of abode of the person making the same, and shall be written, typed, lithographed, or printed.

For the purposes of these regulations, statutory declarations and affidavits shall be made and subscribed as follows:

For the purposes of this regulation the expression Commonwealth representative means any Ambassador, High Commissioner, Minister, Chargé d’Affaires, Consular Officer, Trade Commissioner, or Tourist Commissioner of a Commonwealth country (including New Zealand); and includes any person lawfully acting for any such officer; and also includes any diplomatic secretary on the staff of any such Ambassador, High Commissioner, Minister, or Chargé d’Affaires.

Any document purporting to have affixed, impressed, or subscribed thereto or thereon the seal or signature of any person authorized by regulation 73 to take a declaration or affidavit, in testimony that the declaration or affidavit was made and subscribed before him, may be admitted by the Commissioner without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration or affidavit.

At any stage of any proceedings before the Commissioner he may direct that such documents, information, or evidence as he may require shall be furnished within such period as he may fix.

Where an application to the court under section 28 of the Act for rectification of the register has been made, the applicant shall forthwith serve an office copy of the application on the Commissioner, who shall enter a notice of the application in the register.

Where an order has been made by the court in any case under the Act, the person in whose favour the order has been made shall forthwith lodge an application in form 33 accompanied by a sealed duplicate of the order or a certified copy of the order, and thereupon the register shall, if necessary, be rectified by the making of any entry therein or the variation or deletion of any entry therein.

For the purposes of section 30 of the Copyright Act 1913, a design shall be deemed to be used as a model or pattern to be multiplied by any industrial process within the meaning of that section—

Except as otherwise provided in these regulations, before exercising any discretionary power given to him by the Act or these regulations adversely to any applicant for registration of a design, the Commissioner shall give at least 10 days’ notice to the applicant of the time when he may be heard.

Where under these regulations any person is required to do any act or thing, or any document or evidence is required to be produced or filed, the Commissioner may, upon the production of such evidence and subject to such terms and conditions as he thinks fit, modify or dispense with the doing of the act or thing or the production or filing of the document or evidence if he is satisfied that it is reasonable so to do.

If the Commissioner thinks fit, any document or drawing or other representation of a design may be amended, and any irregularity in procedure may be rectified, on such terms as the Commissioner may direct, including the payment of a fee not exceeding $50.

The times prescribed by these regulations for doing any act, or taking any proceeding thereunder, may be extended by the Commissioner if he thinks fit, and upon such notice to the parties and upon such terms as he may direct, and such extension may be granted though the time has expired for doing such act or taking such proceeding. An application for an extension of time under this regulation shall be made in form 34.

Where under section 7(4) of the Act an application for the registration of a design has been deemed to be abandoned for a continuous period of 6 years, the Commissioner may, at the expiration of that period, destroy the application and all or any of the records in respect of the said application, including the drawings, representations, and specimens (if any) accompanying or left in connection with the said application.

Where under section 12 of the Act the copyright in a registered design has ceased to subsist for a continuous period of 6 years, the Commissioner may, at the expiration of that period, destroy the relevant application and all or any of the file records in respect of the said application except such drawings, representations, and specimens (if any) as may be required for search purposes.

The regulations specified in Schedule 3 are hereby revoked.

Without limiting the provisions of the Acts Interpretation Act 1924, it is hereby declared that the revocation of any provision by these regulations shall not affect any document made or any thing whatsoever done under the provision so revoked or under any corresponding former provision, and every such document or thing, so far as it is subsisting or in force at the time of the revocation and could have been made or done under these regulations, shall continue and have effect as if it had been made or done under the corresponding provision of these regulations and as if that provision had been in force when the document was made or the thing was done.