Design protection deadlines are vital to securing and maintaining exclusive rights. However, the intellectual property offices of both Australia and New Zealand recognise that genuine errors and omissions may impede timely compliance. In such circumstances, design owners may apply for extensions. This article examines the statutory frameworks under Australia’s Designs Act 2003 and New Zealand’s Designs Act 1953, contrasting the approaches, key criteria, and illustrative case studies.
Extensions of Time Under Australia’s Designs Act 2003
Section 137(1) – Mandatory Extensions for Office Errors
Under section 137(1) of the Designs Act 2003, the Registrar must grant an extension of time if a relevant procedural act missed its deadline due to an error or omission by:
- The Registrar or a Deputy Registrar;
- A person employed in the Designs Office; or
- A service provider to the Designs Office.
This provision acknowledges administrative mistakes by the Office itself and operates as an entitlement for applicants rather than a discretionary measure.
Section 137(2) – Discretionary Extensions for Applicant Errors
Section 137(2) allows the Registrar discretion to extend deadlines where the failure is due to:
- An error or omission by the applicant (or their agent), or
- Circumstances beyond the applicant’s control.
To succeed, applicants must demonstrate that the error or omission was:
- Genuine and causally linked to the missed act; and
- Occurred despite the intention to perform the act within the prescribed time.
A mere forgetfulness or misunderstanding of the law does not ordinarily satisfy the standard. For example, in Kmart Australia Ltd [2011] ADO 2, a misunderstanding of Community Design protection did not constitute an excusable error.
Key Criteria for Australian Extensions of Time
- Causal Link: A direct “because” connection between the error and the failure to act.
- Genuineness: The error must reflect a bona fide intention to comply.
- No Sympathy for Mere Forgetfulness: Simple negligence or assumption that an act was done is insufficient.
Extensions of Time under New Zealand’s Designs Act 1953
Section 37A – Discretionary Extensions
New Zealand’s Section 37A parallels Australia’s discretionary regime but frames the inquiry differently. The Commissioner may extend the filing deadline for design applications upon terms deemed appropriate where:
- The applicant or agent failed to comply due to circumstances warranting leniency; but
- May refuse if the applicant did not allow reasonable time for document delivery, failed to act with due diligence and prudence, or unduly delayed the request.
Due diligence and prudence emphasise both intent (unintentionality) and the quality of actions taken, focusing on earnest, cautious efforts in practice.
Section 37A in Practice
In exercising discretion, IPONZ scrutinises:
- Procedural steps taken by the applicant;
- Familiarity with New Zealand design law procedures; and
- Evidence of timely instructions to agents or third parties.
Unlike Australia, New Zealand places explicit weight on the applicant’s familiarity with local processes, as seen in reported outcomes where strong procedural knowledge influenced favourable extensions.
Section 29 – Correction of Register Errors
Beyond extending deadlines, Section 29 empowers the Commissioner to correct errors or omissions in the register or related documents where a genuine mistake has occurred. Although not explicitly labelled as an extension of time provision, Section 29 operates as a pseudo‑extension mechanism by restoring lapsed rights and rectifying procedural failures, effectively achieving the same practical outcome as an extension of time. Key facets include:
- Corrections may address mistakes by either the Office or the proprietor;
- Requests require written application and prescribed fees;
- If a proposed correction may materially alter the document’s scope, public notice must be given.
Key Examples: Tweco Products Inc [2009] NZIPODES 1
In Tweco Products Inc [2009] NZIPODES 1, Design No. 29157 lapsed due to a renewal fee sent to the wrong address. IPONZ initially refused correction, determining that there was no “mistake” in the register. On appeal, a High Court found that the lapse resulted from a procedural error in the renewal process, not a substantive policy question, and directed correction upon evidence of intent and due diligence by the owner.
Conversely, in Rainsford Pty Ltd [2003] NZLR 490, the Court declined to correct a registration lapse where the attorney’s system failure lacked evidence of clear owner intent to renew, illustrating the fact sensitive nature of Section 29 applications.
Side-By-Side Comparison
| Aspect | Australia (Designs Act 2003) | New Zealand (Designs Act 1953) |
| Mandatory extension | Registrar must extend for Office errors (s137(1)) | No direct equivalent; corrections under s29 |
| Discretionary extension | Registrar may extend for applicant error/circumstance (s137(2)) | Commissioner may extend (s37A), but refusal grounds include lack of diligence |
| Correction of register | No standalone provision; covered under extension regimes | S29 provides broad correction power that may extend a deadline in certain circumstances |
| Key test | Causal link and genuineness | Due diligence, prudence, and familiarity with NZ law |
While both jurisdictions seek to balance legal certainty with fairness, Australia’s causality-based enquiry contrasts with New Zealand’s broad discretion tempered by rigid diligence standards.
Best Practices for Applicants
- Document Intent: Maintain clear records of instructions and attempts to meet deadlines.
- Engage Proactive Agents: Choose agents familiar with local procedures and confirm timely actions.
- Act Promptly on Errors: Upon discovering an omission, apply for extension or correction without delay.
- Prepare Evidence: Demonstrate genuine intent, causal connection, and due diligence in submissions.
Conclusion
Extensions of time and corrections of design deadlines safeguard rights when genuine errors occur. Understanding the nuances of Australia’s Designs Act 2003 and New Zealand’s Designs Act 1953 is essential to crafting persuasive applications and avoiding irrevocable registration lapses.
The MBIP team would be glad to assist with any enquiries regarding design registration and design law in Australia and New Zealand. You are welcome to reach out by calling us on +61 7 3369 2226, or submitting an enquiry online via our contact form.
