Spa-ring yourself future costs: making sure a design is new or original in New Zealand
What makes a design “new or original”?
This was one of the issues the Assistant Commissioner recently considered in Guangzhou Sunrans Sanitary Ware Co., Ltd v Watkins Manufacturing Corporation  NZIPODES 1, the first IPONZ design registration decision since 2014.
Watkins Manufacturing (makers of the NXT range of spa pools) successfully applied to have Guangzhou Sunrans’ (makers of Sunrans spa pools) design registration for an outdoor spa pool cancelled on two grounds: the design was not new or original and there was prior publication of the design.
Watkins argued that Sunrans’ design registration was not new or original because it looked substantially the same to its own spa pools.
Sunrans’ design looked like this:
Watkins’ design looked like this:
(Images reproduced from the decision of the Assistant Commissioner)
“New or original”: the legal principles
Design registration litigation is rare in New Zealand because of the industrial copyright protection afforded to copyright owners under the Copyright Act 1994.
As a result, what makes a design “new or original” was last comprehensively considered in 2004 by the High Court, some 15 years ago. The Assistant Commissioner in this case therefore considered it appropriate to re-cap and summarise the relevant principles as:
(a) The design must be compared to the prior art (other designs);
(b) It is not possible to precisely define how much one design must differ from another before it is new or original;
(c) But it is not enough to point to any differences in the design from prior designs – the design in question must be substantially new or substantially original;
(d) A design may be original, even if all of its parts are old and common knowledge at the date of registration. If the combination of two or more old and well-known designs (or parts of designs) gives a whole new appearance of a new design, that may be original;
(e) The design must be assessed as a whole as to whether it is substantially similar to any previous design;
(f) A trade variant which any skilled workman or workwoman might make is not new or original. Whether a design is a trade variant will be a question of fact, but a trade variant must be one commonly known or used in connection with a particular article or class of article;
(g) Whether a given design is original is to be decided “by the eye” (by looking at it).
In finding that Guangzhou Sunrans’ design was not new or original, the Assistant Commissioner also applied the High Court’s reasoning that “new or original” involves the idea of novelty of pattern, shape or ornament itself – the design is “new” so as to “suggest” for the first time something that had not occurred to anyone before.
Difference with “original” under copyright law
The concept of novelty or originality under design law is different to the concept the concept of originality under copyright law. As discussed, under design law for a design to be new or original the whole of the design must be substantially different from any previous design. Under copyright law, for a work to be original it must be the product of more than minimal time, skill, labour or judgment. There is no requirement that a design be ‘new’, and no immediate requirement to assess originality against prior art (such an assessment may be undertaken however if originality in a copyright work is challenged). Further, a copyright work can be original even if the work has only been slightly modified from an earlier work by the same author, provided the ‘new’ work is still the output of more than minimal time, labour, skill and judgment.
What all this means in practical terms is that a business has to meet a higher threshold of originality if it is considering registering a design. It cannot rely on small changes from existing designs to justify protection under a registered design (Guangzhou Sunrans demonstrates this); the design must be ‘substantially different’ to be original.
To achieve registration, a design registration must be new or original, which means something novel. When considering whether to apply for a registered design, a company should consider how different its design is from existing items on the market. If you need advice on whether your design is novel, contact your James & Wells’ attorney.