Rainsford Pty Ltd v Assistant Commissioner of Designs
(2003) 57 IPR 138
The applicant is an Australian company, which was the proprietor of a registered design in New Zealand under the Designs Act 1953 (NZ). The registration expired as no application for renewal was made due to errors and oversights by the applicant’s agent. Once the error was discovered, an attempt was made to restore the registration by making a formal request for the correction of an error in the register. The error claimed was the failure to pay the renewal fee.
After a hearing, the Assistant Commissioner of Designs held that as the renewal fee had not been paid within the prescribed time, the registration had properly lapsed and accordingly there was no error in the register to correct. The applicant appealed this decision to the High Court.
The applicant also made a fresh application directly to the High Court for rectification of the register by restoring the lapsed registration. The appeal and the application for rectification were heard together.
On the appeal from the Assistant Commissioner’s decision, the Court held:
(1) The Designs Act does not provide for the restoration of lapsed registrations;
(2) The lack of a legislative restoration provision is fatal regardless of the reasons for a registration lapsing;
(3) The circumstances leading to the lapse of the registration in this case do not constitute a “mistake” under either a literal or a purposive interpretation of subsection 29(3) of the Designs Act, which authorizes the correction of mistakes in the register. This subsection is limited to the correction of documentary or clerical errors; and
(4) A lapsed registration is of no effect and cannot be corrected.
In respect of the application for rectification, the Court held:
(1) The applicant did not seek a rectification of the register within the meaning of the rectification provisions, but sought the resurrection of a lapsed registration that was “lost for good”.
(2) Restoring the application under the rectification provisions of the Act would subvert the legislature’s intention that registration should irrevocably lapse if renewals are not obtained as required by the renewal provisions.
.