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Design Infringer in Hot Water

Registered Designs protect the look and style of a product – its aesthetic value – and can be very useful in industries where an integral part of the brand is how something looks.  (A good example is the distinctive shape of the iPhone, which Apple has sued Samsung over in multiple jurisdictions.)

The New Zealand High Court recently enforced a Design Registration relating to the external appearance of a Hot Spring® spa pool[1].

Registered Designs (in New Zealand) do not protect anything to do with function, but do protect features which appeal to and are judged solely by the eye – what makes the product look good.

In the Hot Spring® spa pool case, the design featured elaborate corners and a highly bevelled baseplate, to create the illusion the weight was supported by the legs, rather than the base, of the pool, and single piece side-walls patterned to provide the illusion of being multiple slats, all of which were agreed to be distinctive and new at the time the design was filed.

Unlike copyright infringement, the Design right was found to be infringed without the plaintiff having to prove any chain of causation between their product and the replica, because the design of the infringing tubs was not substantially different.

Design rights form a useful addition to copyright in New Zealand, but with the proviso that you MUST file apply for design registration before selling or publicising the new style of the product.

(Overseas, designs can be even more useful, as in some jurisdictions they can be used to protect functional shapes as well, and copyright for 3D is usually not available overseas. The same proviso applies)

Saunders & Co’s Intellectual Property expert, Virginia Nichols, helps clients protect their Designs in New Zealand and overseas, and can help you develop the most effective strategy for the distinctive look of your products.

[1] Watkins Manufacturing Corporation v Prestige Pools Limited [2018] NZHC 709 (18 April 2018)