Background facts<\/h6>\n
Watkins Manufacturing (makers of the NXT range of spa pools) successfully applied to have Guangzhou Sunrans\u2019 (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.<\/p>\n
Watkins argued that Sunrans\u2019 design registration was not new or original because it looked substantially the same to its own spa pools.<\/p>\n
Sunrans\u2019 design looked like this:<\/p>\n
![\"\"](\"https:\/\/www.jamesandwells.com\/wp-content\/uploads\/spa.png\")
<\/p>\n
Watkins\u2019 design looked like this:<\/p>\n
![\"\"](\"https:\/\/www.jamesandwells.com\/wp-content\/uploads\/spa2.png\")
<\/p>\n
<\/p>\n
(Images reproduced from the decision of the Assistant Commissioner)<\/em><\/p>\n Design registration litigation is rare in New Zealand because of the industrial copyright protection afforded to copyright owners under the Copyright Act 1994.<\/p>\n As a result, what makes a design \u201cnew or original\u201d was last comprehensively considered in 2004 by the High Court, some 15 years ago.[1]<\/sup>\u00a0The Assistant Commissioner in this case therefore considered it appropriate to re-cap and summarise the relevant principles as:[2]<\/sup><\/p>\n (a)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 The design must be compared to the prior art (other designs);<\/p>\n (b)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 It is not possible to precisely define how much one design must differ from another before it is new or original;<\/p>\n (c)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 But it is not enough to point to any differences in the design from prior designs \u2013 the design in question must be substantially new or substantially original;<\/p>\n (d)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 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;<\/p>\n (e)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 The design must be assessed as a whole as to whether it is substantially similar to any previous design;<\/p>\n (f)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 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;<\/p>\n (g)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 Whether a given design is original is to be decided \u201cby the eye\u201d (by looking at it).<\/p>\n In finding that Guangzhou Sunrans\u2019 design was not new or original, the Assistant Commissioner also applied the High Court\u2019s reasoning that \u201cnew or original\u201d involves the idea of novelty of pattern, shape or ornament itself \u2013 the design is \u201cnew\u201d so as to \u201csuggest\u201d for the first time something that had not occurred to anyone before.[3]<\/sup><\/p>\n 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.[4]<\/sup>\u00a0There is no requirement that a design be \u2018new\u2019, 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 \u2018new\u2019 work is still the output of more than minimal time, labour, skill and judgment.<\/p>\n 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 \u2018substantially different\u2019 to be original.<\/p>\n 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\u2019 attorney.<\/p>\n What makes a design \u201cnew or original\u201d? This was one of the issues the Assistant Commissioner recently considered in\u00a0Guangzhou Sunrans Sanitary Ware Co., Ltd v Watkins Manufacturing Corporation [2019] NZIPODES 1, the first IPONZ design registration decision since 2014. Background facts Watkins Manufacturing (makers of the NXT range of spa pools) successfully applied to have…<\/p>\n","protected":false},"author":8,"featured_media":3003,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":""},"categories":[233],"class_list":["post-3482","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-copyright-intl","insight-resource-articles-intl"],"acf":[],"yoast_head":"\n\u201cNew or original\u201d: the legal principles<\/h6>\n
Difference with \u201coriginal\u201d under copyright law<\/h6>\n
Conclusion<\/h6>\n
\n<\/em>2. Sutton & Sutton v Bay Masonry Ltd & Elisara HC Tauranga CIV-2003-470-260, 28 May 2004; Guangzhou Sunrans Sanitary Ware Co., Ltd v Watkins Manufacturing Corporation [2019] NZIPODES 1 at [30].
\n<\/em>3. Guangzhou Sunrans Sanitary Ware Co., Ltd v Watkins Manufacturing Corporation [2019] NZIPODES 1 at [31]-[32].
\n<\/em>4. Henkle KgaA v Holdfast New Zealand Limited [2006] NZSC 102 at [37]-[41].<\/em><\/div>\n","protected":false},"excerpt":{"rendered":"