Reasoning behind the decision
The Designs Act 1953 governs design registration in New Zealand.
Under section 5(2) of the Act, “a design shall not be registered unless it is new or original and in particular shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered or published in New Zealand…”
Assistant Commissioner Reeve adopted a conjunctive reading of this provision, treating “new or original” as a separate and independent requirement from “published or registered in New Zealand.” Drawing on the Onesteel decision, he reasoned that the prior art base for assessing the “new or original” requirement is not limited to designs formally published or registered in New Zealand, but can include other accessible documents – such as unpublished foreign filings.
Critically, US application 1 was not published but became accessible only because a certified copy had been placed on the IPONZ register for the related New Zealand design application (435363) as part of that application’s convention priority claim. Reeve held that this accessibility was sufficient to establish the design as prior art for the purposes of the “new or original” requirement, even though US Application 1 was neither “published” nor “registered" in New Zealand within the ordinary meaning of those terms in section 5(2).
This aspect of the decision may be revisited if challenged on appeal.
