Although copyright, patents and trade marks often first come to mind when mentioning "technology" and "intellectual property" together, registered designs can also add significant value to business's intellectual property portfolios for technological products. For common consumer gadgets such as computers and digital cameras, the functionality of the products can be quite similar between manufacturers. The decision to buy one product over another often comes down to its look and feel. It makes sense then for businesses to protect their original designs where possible.

The commercial significance of registered designs was brought to light in the recent USA case of Apple Inc v Samsung Co Ltd, where over a billion dollars in damages was awarded to Apple. The jury in that case was charged with the task of comparing the designs of more than twenty devices. One of the issues in that case was whether there had been an infringement of Apple's registered design for the shape of a computer tablet. The legal battles between Apple and Samsung may continue to play out across a number of jurisdictions with registered designs being relevant to the contested issues. Juries do not decide intellectual property cases in many other jurisdictions.

Protection Provided by Registered Designs

A design registered under New Zealand's Designs Act 1953 (Designs Act) can protect the external shape, patterns, configurations and ornamentations that are applied to an article (or product) by industrial means. These are the design elements of products that are intended to have visual appeal, although it is not required that they have artistic merit. For example, registered designs are able to protect the pattern of buttons on a mobile phone or the shape of a camera casing. Recent case law suggests that registered design protection may also be able to protect designs used in digital display interfaces.

The advantage of a registered design is that the owner has the exclusive right in New Zealand to make, import, or sell any product that has the registered design applied to it. Unlike copyright, it is not necessary to show that the design has been copied. This means that another person who has independently created a design that is the same will infringe the registered design.

Design Registrations for Technological Products

Technology-related registered designs in New Zealand have typically been taken advantage of by businesses that produce or design tangible products. For example, Sony has a number of registered designs for products such as headphones, gaming consoles and other media and accessories.

Registered designs can also protect designs of a product's internal components, if those components are also sold separately. However, this may have little commercial value for some businesses, particularly if the visual appeal lies in the assembled product or exterior components rather than internal components. Where that is the case, protection may still be available under the Copyright Act 1994, the Patents Act 1953 or the Layout Designs Act 1994 (which protects original layout designs of integrated circuits).

Design Registrations for Digital Designs

The capabilities of modern technology were not foreseen at the time New Zealand's Designs Act came into force in 1955. Courts have also struggled to reconcile legislation created many years ago with present digitally-generated designs. However, 21st century decisions suggest that in some circumstances it is possible to register designs that are generated digitally.

In New Zealand, the Assistant Commissioner of Designs in Altoweb Inc v Commissioner of Designs held that a design displayed on a computer screen was registrable. This was on the basis that, although the design was transitory in nature (the design would disappear when the display screen is turned off), this did not affect whether it was applied by an industrial means to an article (being the display screen). The Assistant Commissioner also considered that interpretation of the definition of "design" under the Designs Act needs to take into account changes in technology, referring to an earlier United Kingdom decision that held that a digital watch display design was registrable.

The software generating the design in Altoweb could be loaded onto an operating system post-purchase. However, in deciding that the design was registrable, the Assistant Commissioner did not distinguish between designs generated by software that is built into an operating system (for example, Apple's iOS software built into a particular Apple device), and designs generated by software that is loaded onto an operating system post-purchase (for example, Microsoft Office software purchased separately for a device). Other jurisdictions have placed weight on this distinction when considering registrability of digitally-generated designs.

Registrability of the same design was also at issue in the Australian decision of Altoweb Inc. However, the Australian Deputy Registrar of Designs in that case held that the design was not registrable under the equivalent Australian legislation because the design was generated by software that was independent of the computer screen. The Australian Deputy Registrar of Designs placed weight on the fact that the software generating the design would not be built into the operating system and screen during its manufacture, and therefore would not be sold to consumers as a "finished article".

The Australian Altoweb decision referred to the United Kingdom decision of Apple Computers Inc v Design Registry. In Apple Computers, the High Court held that icons on a computer screen representing a computer interface were registrable as designs. The court in that case found that the computer screen displaying the icons would be the "article", and that the software (which generated the icons) was created as part of an industrial process. However, the court also clarified that its decision relied on the fact that the software would be built into the operating system at the time of manufacture, before the finished product was sold to the public.

Following Apple Computers, the United Kingdom legislation was amended to broaden the definitions of "design" and "article" (now defined as "product"). From the wording of the amended United Kingdom legislation it is conceivable that graphic symbols produced by computer software are eligible for design registration, although software code itself will not be registrable as a design.

The New Zealand Altoweb decision is encouraging to businesses wanting to register digitally-generated designs. But given the different approaches in Australia and the United Kingdom, this would benefit from further clarification by a higher court in New Zealand or by a clarifying amendment to the Designs Act.

Designs Eligible for Registration

A design must meet a number of criteria to be eligible for registration. As well as appealing to the eye, amongst other things the design must:

  • be applied to an article;
  • be new or original;
  • comprise of features of shape, configuration, pattern or ornament; and
  • be applied to the article by an industrial means. This means it must be able to be produced en masse, and can include hand-made articles.

A design will not be eligible for registration if it is dictated solely by function, such as if the design only enables the product to be used or makes the product more useful. This can sometimes be difficult to distinguish, particularly where the visual design of a product is linked to its function (such as the shape of a digital camera). Some designs are also excluded from protection under the Designs Act, such as designs applied to printed matter. However, a design may still be protected by copyright and protection may also be available under the Patents Act 1953 if it is a functional design that is inventive and conceptually new.

A design will not be new or original if the same design is already in the public domain in New Zealand in relation to the same product. It will also not be original if the features of the design are commonly used in the trade.

It is important that a design that may be registrable is not published or used commercially before an application to register the design is made, as this may affect its eligibility for registration. Before registered protection is sought, steps should be taken to ensure that the design is not published or used commercially. Having in place appropriate confidentiality clauses in employment and non-disclosure agreements can help protect the design from this risk.

Conclusion

Businesses should consider how registered designs can benefit their intellectual property portfolio and give them the upper hand over competitors. Registered designs will likely continue to play an important part in protecting intellectual property rights in technological products, particularly as the visual appeal of products continues to influence consumer purchase decisions. We can expect further development of the law on the registrability of digitally-generated designs.