Category: Designs

New Zealand Registered Designs Now Available on DesignView

From 30th June 2020, the New Zealand Intellectual Property Office (IPONZ) has made its registered design data available on DesignView – a searchable international database of registered designs from the European Union Intellectual Property Office (EUIPO).

 

What are Design Rights?

In New Zealand, a registered design protects the visual appearance of a product, or a part of a product.  The protection can cover 3-dimensional shapes and product configurations, as well as patterns and ornamentation in 2-dimensions (such as wallpaper, textiles and labels).

Registered designs protect the way a product looks, not the way it works, and so purely functional designs are not protected (a patent may be more appropriate for protecting the functional aspects of a product).  Examples of products that may be protected by registered design rights include tools, machinery, furniture, jewellery and clothing, as well as their packaging.

The protection afforded allows the owner an exclusive right to use the design in trade or business, including making, importing, selling or hiring any product for which the design is registered.

In New Zealand, so long as the renewal fees are paid, registered designs last for 15 years.

 

Why Search Designs?

In order to qualify for registration, a design must be:

  • New and original
  • More than just functional
  • Appealing to the eye

 

A design search will help answer questions around novelty and originality.  It can also address the likelihood of a product infringing any existing third-party patents and designs in those jurisdictions where you want to operate.

 

DesignView

DesignView is a free global online tool from the European Union Intellectual Property Office (EUIPO) that facilitates searching of over 16 million registered designs from the 72 participating offices around the world.

A range of IP right, bibliographic and legal status information can be searched and investigated, including the product indication, Locarno classification, ownership, legal status and registration date.  Access to details at the office of origin is also provide.

The news of New Zealand joining DesignView follows closely the announcement that the EUIPO had launched improved versions of both its DesignView (designs) and TMview (trade marks) databases.  The improvements include a wider set of search criteria and abilities to fine tune queries, a function to compare designs and trade marks side-by-side, and the capability to export to PDF, Excel and Word formats.

Alistair Curson

 

References

AJ Park. “Designs: Protecting your design in New Zealand”. Retrieved July 14, 2020, from: https://www.ajpark.com/assets/Uploads/Resource/Protecting-your-design-in-New-Zealand.pdf

Bainbridge D. (2012). Intellectual Property, 9th edn, Pearson Education Limited, Harlow, England.

Curson A. (2020, April 21). “Expanding the Scope of Free Global Intellectual Property Databases”. Retrieved July 14, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=294

European Union Intellectual Property Network. (2020, June 29). “News: New Zealand joins DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview/news

European Union Intellectual Property Network. (2020, April 02). “News: The EUIPO has launched improved versions of TMview and DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. “DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview

James & Wells. “Design registration FAQs”. Retrieved July 14, 2020, from: http://www.jamesandwells.com/resource/design-registration-faqs/

New Zealand Designs Act 2002, s5. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281716.html

New Zealand Designs Act 2002, s11. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281725.html

New Zealand Intellectual Property Office. “Designs”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/about-ip/designs/

New Zealand Intellectual Property Office. “New Zealand’s designs are now on EUIPO’s DesignView”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/news/new-zealands-designs-are-now-on-euipos-designview/

World IP Day 2019

World Intellectual Property Day is celebrated on 26th April every year.  In 2019 the theme is “Reach for Gold: IP and Sports”.

I’ve decided to publish this post a little earlier than usual to coincide with this celebration.  Also, given my base in New Zealand and the importance of sport in Aotearoa, I felt today was a great opportunity to look at how IP is embedded in our sport, and our businesses in general.

 

IP in Sport

Sources:

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171. Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

 

The figure above shows a few examples of where IP might potentially be found in a rugby match.  Whereas the examples chosen aren’t necessarily present in this particular picture, the purpose of this illustration is to show that IP is embedded in all aspects of the game; from the branding of a team and the sponsors (trade marks); to the clothes being worn (designs); to the equipment being used (patents); to aspects of the match event and its broadcast beyond the stadium (copyright).

Looking closely at our own businesses, we can find IP through an organisation and its activities in much the same way.

IP is an important strategic asset protecting the products, processes and software your business relies on, the design and appearance of your products and their packaging, your documentation and business development collateral, as well as your brand and the commercial reputation and goodwill embedded within it.

Understanding your business’s IP and the broader IP landscape in which it and your business sits is an important part of any business management and decision making process.

Alistair Curson

 

References

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171.  Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Immigration. (2018, November 07). “New Zealand Now: Live in New Zealand: Recreation: Sports”. Retrieved April 20, 2019, from: https://www.newzealandnow.govt.nz/living-in-nz/recreation/sports

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

UK IP Rights After Brexit

With the Brexit story continuing and no-one still yet knowing what the final outcome will be, I’m looking at what is likely to happen to UK intellectual property rights if, when and how the UK leaves the European Union (EU), particularly in the scenario of a no-deal Brexit.

Recently, the UK Intellectual Property Office (UKIPO) published new guidelines as to how IP rights will be handled in the event of a no-deal Brexit.

If your business has IP rights in the UK, how might you be affected?

 

Patents

There are currently two types of patent right available in the UK: a UK (GB) national patent filed with the UKIPO, and a UK-validated European patent filed with the European Patent Office (EPO).

If the UK leaves the EU without a Brexit deal then the impact upon these existing patent rights will be minimal.

UK patents granted by the UKIPO will largely be unaffected as the UKIPO is not an EU institution.  A few areas of UK patent law originate from EU law and regulation, and their implementation, and thus have the potential to be affected.  These include supplementary protection certificates (for pharmaceutical products and agrochemicals); biotechnology inventions; compulsory licensing; and clearance to conduct certain studies, trials and tests in relation to patented pharmaceuticals.  However, the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018, and thus, after exit day, things will continue as they do now.

European patents prosecuted and granted by the EPO under the European Patent Convention (EPC) that designate the UK will also be unaffected.  Again, the EPO is not an EU institution.  Being a contracting state to the EPC is separate from being a member of the EU.

There is a third patent right currently being developed in Europe, the unitary patent, that is close to coming into effect.  This is a new pan-European patent and associated court system, intended to cover all EU member states.  Its jurisdiction will be the EU, and, at the time of writing, the unitary patent has not yet come into effect.

 

Trademarks

If the UK leaves the EU without a deal then the following IP rights will no longer be valid in the UK:

  • Protected trade mark registrations, granted by the EU Intellectual Property Office (EUIPO)
  • Protected international trade mark registrations, filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO), designating the EU

UK law is being revised such that, from exit day, comparable UK trade marks will be created for all EU registered trade marks, and for all international trade mark registrations (under the Madrid Protocol) that designate the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK trade mark (subject to certain conditions) within nine months after exit day.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Designs

Similarly, if the UK leaves the EU without a deal then the following IP rights will cease to be valid in the UK:

  • Registered community designs (RCDs), granted by the EUIPO
  • Protected international design registrations, filed under the Hague Agreement at WIPO, designating the EU
  • Unregistered community designs (UCDs)

UK law is being revised such that, from exit day, comparable UK registered designs will be created for all EU registered community designs, and for all international design registrations (under the Hague Agreement) protected in the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK registered design (subject to certain conditions) within nine months after exit day.

Unregistered community designs that protect a design in the UK will continue to provide protection in the form of a UK continuing unregistered design.  This will arise automatically and will continue for the remaining term of the relevant UCD.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Next Steps

There are further specifics, constraints and details for each type of right.  For further information and advice as to how this might affect your business, contact the UKIPO and / or a registered IP attorney.

Alistair Curson

 

References

Burnett-Hall, G. (2018). “Brexit & Patents”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/MarksClerk/media/MCMediaLib/Reports/Brexit-series-Patents.pdf

European Patent Office. “Unitary Patent & Unified Patent Court”. Retrieved March 30, 2019, from: https://www.epo.org/mobile/law-practice/unitary.html

Marks & Clerk. “What countries will the Unitary Patent and Unified Patent Court cover?”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/Direct-Access-Pages/What-countries-will-the-Unitary-Patent-and-Unif.aspx#.XJ62eJgzaHs

UKIPO. (2019, March 21). “Changes to trade mark law in the event of no deal from the European Union”. Retrieved March 30, 2019. from: https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union

UKIPO. (2019, March 22). “Changes to registered design, design right and international design and trade mark law if the UK leaves the EU without a deal”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-registered-design-design-right-and-international-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

UKIPO. (2019, March 22). “IP and Brexit”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit