ORGANISATION MONDIALE 
DU COMMERCE 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce RESTRICTED 
IP/N/I/NZL/L/l 
26 janvier 1996 
(96-0245) 
Original: anglais 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTDELLE NOTIFIEES AD TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
N ouvelle-Zelande 
Schemas de configuration (topographies) de circuits integres 
Le present document contient le texte des lois et reglementations ci-apres 1, notifiees par la 
Nouvelle-Zelande au titre de l'artic1e 63:2 de l' Accord (voir le document IP/N/lINZL/1): 
Loi de 1994 sur les schemas de configuration 2 
Ordonnance de 1995 sur les schemas de configuration (pays beneficiaires) 22 
1 Anglais seulement. IP/N/I/NZL/L/l 
Page 2 
1994 Layout Designs No. 116 
ANALYSIS 
Title 
1. Short Title and commencement 
PART I 
INTERPRETATION AND ApPLICATION 
2. Interpretation 
3. Meaning of "commercially exploited" 
4. Meaning of "exclusive right" 
5. Meaning of "making" in relation to an 
eligible layout design 
6. Meaning of "original" 
7. Licence of owner of layout design rights 
8. Eligible layout design includes substan· 
tial part of the design 
9. Reference to joint makers 
10. Application to layout design~ made 
before commencement of this Act 
1 1. Act to bind the Crown 
PART 11 
OWNERSHIP AND NATURE OF LAYOUT DESIGN 
RIGHTS 
12. Ownership of layout design rights 
13. Nature of layout design rights 
14. Infringement of layout design rights 
PART III 
EXCEPTIONS 
15. Innocent commercial exploitation 
16. Copying for private use 
1 7. Copying for research or teaching 
purposes 
18. Evaluation or analysis 
19. Commercial exploitation of eligible lay· 
out design previously exploited under 
licence 
20. Use for defence, security, and other 
purposes 21. Nature and scope of rights under 
section 20 
22. Duty to inform owner 
23. Owner of layout design rights entitled 
to remuneration 
24. Appeal to High Court 
PART IV 
REMEDIES FOR INFRINGEMENT 
25. Actions for damages 
26. Injunctions 
27. Application of sections 28 to 34 of this 
Act to exclusive licensee 
28. Rights of exclusive licensee 
29. Proceedings where concurrent rights 
exist 
30. Defences in proceedings by exclusive 
licensee 
31. Assessment of damages where exclusive 
licence granted 
32. Apportionment of profits between 
owner and exclusive licensee 
33. Limitation on relief where separate pro· 
ceedings relate to same infringement 
34. Liability for CE)sts 
35. Presumptions 
36. Proof of certain facts 
PART V 
MISCELLANEOUS 
37. Eligible countries 
38. Prospective ownership of layout design 
rights 
39. Assignments and licences of layout 
design rights 
40. Groundless legal proceedings 
41. Amendments to Copyright Act 1962 
42. Amendment to Commerce Act 1986 
1994, No. 116 
An Act to provide for the protection of layout designs for 
integrated circuits [25 November 1994 
BE IT ENACTED by the ParliaIllent of New Zealand as follows: 
Public-I 1 6 Price Code: 20-CY 2 Layout Designs IP IN II/NZL/L/l 
Page 3 
1994, No. 116 
1. Short Title and cotntnencetnent-( 1) This Act may be 
cited as the Layout Designs Act 1994. 
(2) This Act shall come into force on the 1st day of January 
1995. 
PART I 
INTERPRETATION AND ApPLICATION 
2 .. Interpretation-In this Act, unless the context otherwise 
requlres,-
"Commercially exploited" has the meaning set out in 
section 3 of this Act: 
"Copyright Tribunal" means the Copyright Tribunal 
established under Part V of the Copyright Act 1962: 
"Crown"-
(a) Means Her Majesty the Queen in right of New 
Zealand; and 
(b) Includes a Minister of the Crown, a department, 
and an Office of Parliament; but 
(c) Does not include-
(i) A Crown entity; or 
(ii) A State enterprise named in the First 
Schedule to the State-Owned Enterprises 
Act 1986: 
"Crown entity" has the same meaning as in section 2. ( 1) of 
the Public Finance Act 1989: 
"DepartIllent" means any department or instrument of 
the Governrnent, or any branch or division thereof; 
but does not include a body corporate or other legal 
entity that has the power to contract, the Public Trust 
Office, or the Export Guarantee Office: 
"Eligible country" means a country, other than New 
Zealand, declared by Order in Council made under 
this Act to be an eligible country for the purposes of 
this Act: 
"Eligible layout design" means an original layout design-
(a) The maker, or in relation to a jointly made 
layout design anyone or more of the makers, of 
which was, at the tiITIe the layout design was made, 
an eligible person; or 
(b) That was first commercially exploited in New 
Zealand or in an eligible country: 
"Eligible person" Illeans-
(a) A New Zealand citizen or a person domiciled or 
resident in New Zealand: IP IN 11 INZL/LI 1 
Page 4 
1994, No. 116 Layout Designs 3 
(b) A body corporate incorporated in New Zealand: 
(c) A citizen of an eligible country or a person who 
is domiciled or resident in an eligible country: 
(d) A body corporate incorporated in an eligible 
country: 
"Exclusive licence" means a licence in writing, signed by 
or on behalf of the owner or prospective owner of 
layout design rights, authorising the licensee, to the 
exclusion of all other persons, to do an act that, under 
this Act, the owner would, but for the licence, have 
the exclusive right to do: 
"Exclusive right" has the meaning set out in section 4 of 
this Act: 
"Future rights" means layout design rights that will corne 
into existence at a future tirne or on the happening of 
a future event: 
"Integrated circuit" means a circuit, in its final or an 
intennediate fonn, in which the elements, at least 
one of which is an active element, and some or all of 
the interconnections are integrally fonned in or on a 
piece of material and that is intended to perform an 
electronic function: 
"Layout design" means the three-dimensional disposition, 
however expressed, of the elements, at least one of 
which is an active element, and of some or all of the 
interconnections, of an integrated circuit; and 
includes such a three-dimensional disposition 
prepared for an integrated circuit intended for 
manufacture: 
"Layout design rights" means the exclusive rights 
specified in section 13 of this Act in relation to an 
eligible layout design: 
"Material form", in relation to a layout design, includes 
any fonn of storage or expression (whether visible or 
not) from which the layout design, or a substantial 
part of it, can be reproduced: 
"Prospective owner" means,-
(a) In relation to future layout design rights that are 
not the subject of an agreement of the kind referred 
to in section 38 (1) of this Act, the person who will be 
the owner of those rights when they come into 
existence; or 
(b) In relation to future layout design rights that are 
the subject of such an agreement, the person in 4 Layout Designs IP IN 11 INZL/LI 1 
Page 5 
1994, No. 116 
whom those rights will vest under that subsection 
when they come into existence: 
"Protection period" , in relation to an eligible layout 
design, means the period beginning on the day on 
which the layout design was made and ending,-
(a) If the layout design is first commercially 
exploited within 5 calendar years after the calerldar 
year in which the layout design was made, at the end 
of the tenth calendar year after the calendar year in 
which the layout design was first commercially 
exploited; and 
(b) In any other case, at the end of the period of 
15 calendar years after the calendar year in which the 
layout design was made. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 5 
8. Meaning of "cotntnercially exploited"-For the 
purposes of this Act,-
(a) A layout design is commercially exploited if the layout 
design, a copy of the layout design, or an integrated 
circuit made in accordance with the layout design 
(whether or not the integrated circuit is incorporated 
in another thing) is-
(i) Sold or hired or otherwise distributed by way of 
trade; or 
(ii) Offered or exposed for sale or hire or other 
distribution by way of trade; or 
(iii) Imported for the purpose of sale or hire or 
other distribution by way ot trade: 
(b) A copy of a layout design or an integrated circuit made in 
accordance with a layout design is commercially 
exploited if it is-
(i) Sold or hired or otherwise distributed by way of 
trade; or 
(ii) Offered or exposed for sale or hire or other 
distribution by way of trade; or 
(iii) Imported for the purpose of sale or hire or 
other distribution by way ot trade;-
and "corrunercially exploiting" and "commercial exploitation" 
have corresponding meanings. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 8 
4. Meaning of "exclusive right"-For the purposes of this 
Act, the exclusive right to do an act in relation to an eligible 
layout design, or an integrated circuit made in accordance with IP IN 11 INZL/LI 1 
Page 6 
1994, No. 116 Layout Designs 5 
an eligible layout design, includes the exclusive right to 
authorise a person to do that act in relation to that layout 
design or integrated circuit. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 9 
5. Meaning of "tnaking" in relation to an eligible 
layout design-( 1) For the purposes of this Act,_ but without 
lirrliting the ordinary meaning of the term "making" in relation 
to an eligible layout design, a person who used a computer to 
make an eligible layout design is to be taken to have made the 
design. 
(2) For the purposes of this Act, an eligible layout design is 
made when it is first fixed in a material form. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 10 
6. Meaning of "original"-For the purposes of this Act, 
but without limiting the ordinary meaning of the word 
"original" in relation to a layout design, a layout design is not 
original if-
(a) Its making involved no intellectual effort by the maker; or 
(b) It was commonplace at the time it was made; or 
(c) In the case of a combination of elements and 
interconnections that are commonplace, the 
cOIllbination as a whole involved no intellectual effort 
by the maker. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 11 
7. Licence of owner of layout design rights-For the 
purposes of this Act, an act is done with the licence of the 
owner of layout design rights if doing that act is authorised by a 
licence binding the owner. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 12 
8. Eligible layout design includes substantial part of 
the design-In this Act,-
(a) A reference to doing an act (other than making) in 
relation to an eligible layout design includes a 
reference to doing that act in relation to a substantial 
part of the design: 
(b) A reference to a copy of an eligible layout design includes 
a reference to a copy of a substantial part of the 
design: 
(c) A reference to an integrated circuit made in accordance 
with an eligible layout design includes a reference to 6 Layout Designs IP IN 11 INZL/LI 1 
Page 7 
1994, No. 116 
an integrated circuit made in accordance with a 
substantial part of the design. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 13 
9. Reference to joint D1.akers-Unless the context 
otherwise requires, a reference in this Act to the maker of an 
eligible layout design is, in relation to a jointly made eligible 
layout design, a reference to all the makers of the layout 
design. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 14 
10. Application to layout designs D1.ade before 
COD1.D1.enceD1.ent of this Act-This Act applies in relation to a 
layout design whether made before or after the 
comIllenceIllent of this Act, but an action does not lie under 
Part IV of this Act in respect of any act done before that 
comIllenceIllent in relation to the layout design, a copy of the 
layout design, or an integrated circuit made in accordance with 
the layout design. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 7 
11. Act to bind the Crown-This Act binds the Crown. 
PART 11 
OWNERSHIP AND NATURE OF LAYOUT DESIGN RIGHTS 
12. Ownership of layout design rights-(l) Subject to this 
section, the person who makes an eligible layout design is the 
first owner of the layout design rights in the eligible layout 
design. 
(2) Where a layout design is made by a person under the 
terms of his or her employment by another person under a 
contract of service or apprenticeship, that other person is the 
first owner of the layout design rights in the eligible layout 
design. 
(3) Where a person commissions the making of a layout 
design for valuable consideration, and the layout design is 
made in carrying out that commission, the person who 
commissioned the work is the first owner of the layout design 
rights in the eligible layout design. 
(4) The application of subsection (2) and subsection (3) of this 
section to the layout design rights in a particular eligible layout 
design may be excluded or modified by agreement. 
(5) Where an eligible layout design has been made jointly by 
persons who are not all eligible persons, this section applies in JP IN 11 INZL/LI 1 
Page 8 
1994, No. 116 Layout Designs 7 
relation to the design as if it had been made solely by those 
who were eligible persons. 
Cf. Circuit Layouts Act 1989 (Aust.), ss. 16 (1 )-(3), 18 
18. Nature of layout design rights-The owner of the 
layout design rights in an eligible layout design has, during the 
protection period of the layout design, the following exclusive 
rights: 
(a) The right to copy the layout design, directly or indirectly, 
in a material form: 
(b) The right to make an integrated circuit in accordance 
with the layout design or a copy of the layout design: 
(c) The right to commercially exploit the layout design in 
New Zealand. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 1 7 
14. Infringetnent of layout design rights-The layout 
design rights in an eligible layout design are infringed by any 
person who, during the protection period, without the licence 
of the owner of the layout design rights does, or authorises 
another person to do, anything which, by virtue of section 13 of 
this Act, is the exclusive right of the owner of the layout design 
rights. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 19 
PART III 
EXCEPTIONS 
15. Innocent cotntnercial exploitation-( 1) The layout 
design rights in an eligible layout design are not infringed by a 
person who commercially exploits, or authorises the 
commercial exploitation of, an unauthorised integrated circuit 
in New Zealand, being an integrated circuit made in 
accordance with the layout design, if, at the time when the 
person acquired the integrated circuit, the person did not 
know, and could not reasonably be expected to have known, 
that the integrated circuit was unauthorised. 
(2) Where a person referred to in subsection (1) of this 
section-
(a) Has in that person's possession or has contracted to 
purchase an integrated circuit that is unauthorised; 
and 
(b) Becomes aware or could reasonably be expected to have 
become aware that the integrated circuit is 
unauthorised,-8 Layout Designs IP IN 11 INZL/LI 1 
Page 9 
1994, No. 116 
that subsection continues to apply to any subsequent 
commercial exploitation of the integrated circuit only, if the 
person pays to the owner or exclusive licensee of the layout 
design rights in the layout design such remuneration as is 
agreed, or as is determined by a method agreed, between the 
person and the owner or exclusive licensee or, in default of 
agreement, as is determined by the Copyright Tribunal on 
application made by either of them. 
(3) In this section, "unauthorised", in relation to an 
integrated circuit made in accordance with an eligible layout 
design, means made without the licence of the owner of the 
layout design. rights in the layout design. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 20; Law and Justice 
Legislation Amendment Act 1990 (Aust.), s. 43 
16. Copying for private use-( 1) The layout design rights 
in an eligible layout design are not infringed by the making 
of-
(a) A copy or copies of the layout design; or 
(b) An integrated circuit in accordance with the layout design 
or with a copy of the layout design-
solely for the private use of the person who makes the copy or 
copies or integrated circuit. 
(2) For the purposes of subsection (1) of this section, a c<?py of 
an eligible layout design., or an integrated circuit made in 
accordance with an eligible layout design or with a copy of such 
a layout design, is not to be taken to have been made for the 
private use of a person if the copy or integrated circuit is 
commercially exploited or distributed otherwise than by way of 
trade to an extent that will prejudice the interests of the owner 
of the layout design rights in the layout design. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 21; Law and Justice 
Legislation Amendment Act 1990 (Aust.), s. 44 
17. Copying for research or teaching purposes-The 
layout design rights in an eligible layout design are not 
infringed by the making of-
(a) A copy or copies of the layout design; or 
(b) An integrated circuit in accordance with the layout design 
or with a copy of the layout design-
solely for research or teaching purposes. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 22; Law and Justice 
Legislation Amendment Act 1990 (Aust.), s. 45 IP IN 11 INZL/LI 1 
Page 10 
1994, No. 116 Layout Designs 9 
18. Evaluation or analysis-(l) The layout design rights in 
an eligible layout design are not infringed by-
(a) The ITlaking of a copy or copies of the layout design for 
the purposes of evaluating or analysing the layout 
design; or 
(b) The ITlaking of an original layout design based on an 
evaluation or analysis carried out with the use of a 
copy 0: copies referred to in paragraph (a) of this 
subsectIon; or 
(c) The ITlaking of an integrated circuit in accordance with an 
original layout design referred to in paragraph (b) of 
this subsection; or 
(d) Copying or cOITlITlercially exploiting in New Zealand an 
original layout design referred to in paragraph (b) of 
this subsection. 
(2) The layout design rights in an eligible layout design are 
not infringed by-
(a) The ITlaking of an integrated circuit in accordance with 
the layout design, or with a copy of the layout design, 
for the purpose of evaluating or analysing the layout 
design; or 
(b) The ITlaking of an original layout design based on an 
evaluation or analysis carried out with the use of an 
integrated circuit referred to in paragraph (a) of this 
subsection; or 
(c) The ITlaking of an integrated circuit in accordance with an 
original layout design referred to in paragraph (b) of 
this subsection; or 
(d) Copying or cOITlITlercially exploiting in New Zealand an 
original layout design referred to in paragraph (b) of 
this subsection. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 23; Law and Justice 
Legislation AITlendITlent Act 1990 (Aust.) s. 46 
19. Cotntnercial exploitation of eligible layout design 
previously exploited under licence-( 1) Where-
(a) An eligible layout design is cOITlITlercially exploited, 
whether in New Zealand or elsewhere, by, or with the 
licence of, the owner of the layout design rights in the 
layout design; and 
(b) A person acquires a copy of the layout design, or an 
integrated circuit ITlade in accordance with the layout 
design, as a result of that cOITlITlercial exploitation,-10 Layout Designs IP IN 11 INZL/LI 1 
Page 11 
1994, No. 116 
it is not an infringelllent of the layout design rights in the 
layout design if the person cOllllllercially exploits the copy or 
the integrated circuit in New Zealand. 
(2) Notwithstanding subsections (2) and (3) of section 10 of 
the Copyright Act 1962 to the extent that those subsections 
apply to imported articles, where the commercial exploitation 
of an integrated circuit containing a copy or adaptation of a 
work (being an integrated circuit made in accordance with an 
eligible layout design) is not, under this section, an infringement 
of the layout design rights in the layout design, that 
commercial exploitation is not an infringement of the copyright 
in that work unless the making of that copy or adaptation was 
an infringement of that copyright. 
(3) Expressions used in subsection (2) of this section that are 
defuled in the Copyright Act 1962 have the same meanings as 
they have in that Act. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 24 
20. Use for defence, security, and other purposes­
( 1) An act done by or on behalf of the Crown, or a person 
authorised in writing by the Chief Executive of a department, 
in relation to an eligible layout design is not an infringement of 
the rights in the layout if the act is done-
(a) For the defence or national security of New Zealand; or 
(b) For the purpose of assisting in a state of national- civil 
defence emergency that is in force under section 50 
of the Civil Defence Act 1983,-
and, before doing the act, the Crown, or the authorised person, 
as the case may be, having taken all reasonable ste,rs to do so, 
has been unable to obtain the licence of the owner of the layout 
design rights, on reasonable terms, to do the act. 
(2) An authorisation may be given before or after the acts in 
respect of which it is given have been done. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 25 (1), (2); Law and 
Justice Legislation Amendment Act 1990 (Aust.), s. 47 
21. Nature and scope of rights under section 20-
(1) The right to use an eligible layout design pursuant to 
section 20 of this Act-
(a) Is both non-exclusive and non-assignable; and 
(b) Is limited to the purpose or purposes specified in that 
section; and 
(c) Is subject to the terms of any authorisation under that 
section; and JP IN 11 INZL/LI 1 
Page 12 
1994, No. 116 Layout Designs 11 
(d) Does not permit sale of the layout design to the public; 
and 
(e) Is limited to use of the layout design predominantly in 
New Zealand. 
(2) An act done under section 20 of this Act in relation to an 
eligible layout design is not to be taken into account in 
calculating the protection period of the layout design. 
(3) Where an exclusive licence is in force in relation to any 
layout design rights, sections 20, 22, and 23 of this Act apply as 
if references to the owner of the layout design rights were 
references to the exclusive licensee. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 25 (6) and (7) 
22. Duty to infonn owner-( 1) Where an act has been 
done under section 20 of this Act in relation to an eligible 
layout design, the Crown or the Chief Executive of the 
departIllent, as the case Illay be, shall, as soon as practicable, 
inforITI the owner of the layout design rights in the layout 
design that the act has been done and give the owner such 
inforITIation about the act as the owner frOIll tiITIe to tiITIe 
requrres. 
(2) Nothing in subsection (1) of this section requires the 
Crown or the Chief Executive, as the case Illay be, to infonn 
the owner or disclose inforITIation to the owner if doing so 
would, or rrlight reasonably be expected to, prejudic~ the 
defence or security of New Zealand. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 25 (3) 
28. Owner of layout design rights entided to 
retn..uneration-Where an act is done under section 20 of this 
Act in relation to an eligible layout design, the Crown shall pay 
such reIlluneration to the owner of the layout design rights as 
may be agreed or determined by a Illethod agreed, as the case 
may be, between the Crown and the owner or, in default of 
agreeIllent, as is determined by the Copyright Tribunal on the 
application of either of them. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 25 (4) 
24. Appeal to High Court-(l) Any person who is 
aggrieved by-
(a) Any act done by or on behalf of the Crown or a person 
authorised by the Chief Executive of a departIllent 
under section 20 of this Act; or 
(b) Any authorisation given by the Chief Executive of a 
departIllent under that section; or 12 Layout Designs IP/N/l/NZL/L/I 
Page 13 
1994, No. 116 
(c) A determination by the Copyright Tribunal under 
section 23 of this Act-
may appeal to the High Court and the High Court may make 
such determination or order as it thinks fit. 
(2) On any such appeal,-
(a) The Crown; and 
(b) Where the appeal is against an authorisation by the Chief 
Executive of a department, the Chief Executive; and 
(c) With the leave of the High Court, any other person-
is entitled to appear and be heard. 
PART IV 
REMEDIES FOR INFRINGEMENT 
25. Actions for datnages-( 1) A court of competent 
jurisdiction may, on the application of the owner of layout 
design rights in an eligible layout design, if it is satisfied that the 
rights have been infringed,-
(a) Make an order for the payment of damages against the 
person by whom the rights were infringed; or 
(b) Require an account of profits to be taken as between the 
owner of the rights and the person by WhOIll the 
rights were infringed. 
(2) Where, in proceedings for an infringement of layout 
design rights,-
(a) It is established that an infringement was committed; but 
(b) At the time of the infringement the defendant was not 
aware, and did not have reasonable grounds for 
suspecting, that the act constituting the infringeIllent 
was an infringeIllent,- . 
the court shall not make any order for the payment of daIllages 
against the defendant in respect of the infringement, but Illay 
order an account of profits to be taken in respect of the 
infringeIllent, whether any other relief is granted or not. 
(3) Where, in proceedings in respect of an infringeIllent of 
layout design rights,-
(a) An infringement is established; and 
(b) The court is satisfied that it is proper to do so, having 
regard to-
(i) The flagrancy of the infringeIllent; or 
(ii) Any benefit shown to have accrued to the 
defendant because of the infringeIllent; or 
(iii) Any other relevant matters,-IP IN 11 INZL/LI 1 
Page 14 
1994, No. 116 Layout Designs 13 
the court may, in assessing damages for the infringement, 
award such additional damages as it considers appropriate in 
the circumstances. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 27; 1962, No. 33, 
s. 24 (1 )-(3) 
26. Injunctions-A court of competent jurisdiction may, on 
the application of the owner of layout design rights in an 
eligible layout design, grant an injunction restraining a person 
from engaging in conduct that constitutes, or would constitute, 
an infringement of those rights. 
27. Application of sections 28 to 84 of this Act to 
exclusive licensee-Sections 28 to 34 of this Act apply to an 
exclusive licensee of layout design rights under a licence that is 
in force at the time the conduct constituting an infringement of 
those rights takes place. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 29; 1962, No. 33, 
s. 26 (1) 
28. Rights of exclusive licensee-(l) Subject to 
subsection (2) of this section, an exclusive licensee has the same 
rights and remedies as the owner of the layout design rights has 
under sections 25 and 26 of this Act as if the licensee were the 
owner. 
(2) The rights and remedies of the exclusive licensee are held 
concurrently with the owner but may not be exercised against 
the owner. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 30; 1962, No. 33, 
s. 26 (2) 
29. Proceedings where concurrent rights exist­
(1) Where-
(a) Proceedings are brought by the owner of layout design 
rights or by the exclusive licensee under section 25 or 
section 26 of this Act; and 
(b) The proceedings relate, wholly or partly, to an 
infringement in respect of which the owner and the 
licensee have concurrent rights under that section,­
the owner or licensee, as the case may be, is not entitled, 
except with the leave of the court, to continue those 
proceedings, in so far as they relate to that infringement, unless 
the licensee or owner, respectively, is joined as a party to the 
proceedings. 14 Layout Designs IP IN 11 INZL/LI 1 
Page 15 
1994, No. 116 
(2) Nothing in subsection (1) of this section applies to an 
application tor an interim injunction by the owner of the layout 
design rights or an exclusive licensee. 
Cf. Circuit Layouts Act 1989 (Aust.), s.31; 1962, No. 33, 
s. 26 (3) 
80. Defences in proceedings by exclusive licensee-In 
proceedings under section 25 or section 26 of this Act by an 
exclusive licensee, a defence under this Act that would have 
been available to a defendant if the proceedings had been 
brought by the owner of the layout design rights is available to 
the defendant against the exclusive licensee. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 32; 1962, No. 33, 
s. 26 (4) 
81. Assessment of damages where exclusive licence 
granted-( 1) Where, in proceedings to which section 29 of this 
Act a}?plies, the owner of the layout design rights and the 
exclUSIve licensee are not both plaintiffs, the court, in assessing 
damages in respect of the infrin~ement, shall,-
(a) If the plaintiff is the exclUSIve licensee, take into account 
any liabilities (such as royalties) to which the licence is 
subject; and 
(b) Whether the plaintiff is the owner of the layout design 
rights or the exclusive licensee, take into account any 
pecuniary remedy already awarded to the other party 
under section 25 of this Act in respect of that 
infringement or any right of action exercisable by the 
other party under that section in respect of that 
infringement. 
(2) In this section and sections 33 and 34 of this Act, the 
expression "the other party", in relation to the owner of layout 
design rights, means tbe exclusive licensee and, in relation to 
the exclusive licensee, means the owner of the layout design 
rights. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 33; 1962, No. 33, 
s. 26 (5), (9) 
82. Apportionment of profits between owner and 
exclusive licensee-Where-
(a) Proceedings under section 25 of this Act relate, wholly or 
partly, to an infringement in respect of which the 
owner of the layout design rights and the exclusive 
licensee have concurrent rights of action under that 
section, whether or not they are both parties; and 
(b) An account of profits is directed to be taken in respect of 
that infringement,-IP IN 11 INZL/L/1 
Page 16 
1994, No. 116 Layout Designs 15 
the court shall, subject to any agreement of which it is aware by 
which the aEplicatlon of those profits is determined as between 
the owner of the lay:out design rights and the exclusive licensee, 
apportion the profits between them in such manner as it 
considers just and shall give such directions as it considers 
appropriate for giving effect to that apportionment. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 34; 1962, No. 33, 
s. 26 (6) 
8S. LiIIlitation on relief where separate proceedings 
relate to SaIl1.e infringetnent-In proceeaings under 
section 25 of this Act brought by the owner of layout design 
rights or by the exclusive licensee,-
(a) A judgtnent or order for the paYIllent of daITIages in 
respect of an infringement oT those rights shall not be 
given or made if a final judgment or order has been 
given or made in favour of the other party directing 
an account of profits under that section in respect oT 
the same infringement; and 
(b) A judgtnent or order for an account of profits in respect 
of an infringement of those rights shall not be gtven 
or made if a final judgt!lent or order has been given 
or made in favour of the other party awarding 
damages or directing an account of profits under that 
section in respect of the same infriiigement. 
er. Circuit Layouts Act 1989 (Aust.), s. 35; 1962, No. 33, 
s. 26 (7) 
84. Liability for costs-Where, in proceedings to which 
section 29 of this Act applies, whether brought by the owner of 
layout design rights in an eligible layout deSIgn or by the 
exclusive licensee, the other party is not joined as a plaintiff, 
either at the COIllIllencement of the proceedmgs or 
subsequent!y, but is added as a defendant, tile other party is 
not liable ror any costs of the proceedings unless that party 
enters an appearance and takes part in the proceedings. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 36; 1962, No. 33, 
s. 26 (8) 
85. PresuDl.ptions-In proceedings under section 25 or 
section 26 of this Act,-
(a) Layout design rights shall be presuIlled to subsist in the 
layout design to which the proceedings relate if the 
defendant does not put in issue the question whether 
.those rights subsist ID the layout deSign; and 
(b) Where layout design rights are proved, or admitted, or 
presumed under paragraph (a) of this section, to 16 Layout Designs IP IN 11/NZL/L/1 
Page 17 
1994, No. 116 
subsist in a layout design, the plaintiff shall be 
presumed to be the owner of the rights if it is alleged 
that the plaintiff is the owner of the rights and the 
defendant does not put in issue the question of 
ownership. 
Cf. Circuit Layouts Act 1989 (Aust.), s.37; 1962, No. 33, 
s. 27 (1) 
86. Proof of certain facts-If, at the time when an eligible 
layout design, a copy of an eligible layout design, an integrated 
circuit made in accordance with an eligible layout design, or an 
article in which such an integrated cIrcuit is incorporated, as 
the case may be, was first commercially exploited, the layout 
design, the copy, the integrated circuit or a package containing 
it, or the article was clearly and legibly labelled or marked so as 
to indicate the following claims, namely,-
(a) That~Jout design rights subsisted in the layout design; 
(b) That the person named on the label or mark as the maker 
of the laxout design was the maker of the layout 
design and any person named as an exclusive licensee 
of tlie owner was an exclusive licensee; and 
(c) That the layout design was first comIllercially exploited in 
the country and the year specified on the label or 
rnark,-
it shall be presumed in any proceedings under section 25 or 
section 26 of this Act, in the absence of evidence to the 
contrary,-
(d) That at all material times any person dealing with the 
layout design, the copy, or the integrated circuit had 
knowledge of each of the claims specified in 
paragrapbs (a) to (c) of this section; and 
(e) That the layout desigp. was first commercially exploited in 
the year specified. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 39; 1962, No. 33, 
s. 27 A; 1985, No. 134, s. 7 
PART V 
MISCELLANEOUS 
87. Eligible countries-(I) Subject to subsection (2) of this 
section, the Governor-General may from time to time, by 
Order in Council, declare a country to be an eligible country for 
the purposes of this Act. 
(2) A country shall not be declared to be an eligible country 
for the purposes of this Act unless-IP IN 11 INZL/LI 1 
Page 18 
1994, No. 116 Layout Designs 17 
(a) It is a party to a treaty or convention relating to the 
protection of layout designs to which New Zealand is 
also a party; or 
(b) The Governor-General is satisfied that, if the country is 
not a party to such a treaty or convention, provision 
is or will be made under the law of that country 
under which adequate protection is or will be given to 
layout designs made by persons referred to in 
paragraph (a) or parawaph (0) of the definition of the 
term "eligible person' in section 2 of this Act and to 
layout designs first commercially exploited in New 
Zealand. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 42 
88. Prospective ownership of layout design rights­
(1) Where, by an agreement in relation to future layout design 
rights and entered into by or on behalf of the person who 
would, apart from this section, be the owner of the rights on 
their coming into existence, that person purports to assign the 
future layout design rights, wholly or partly, to another person 
(in this subsection called the "assignee"), the rights, on coming 
into existence, shall, by virtue of this section, vest in the 
assignee or the assignee's successor in title. 
(2) Where, at the time when a layout design right comes into 
existence, the person who would be entitled to the right is 
dead, the right devolves as if, immediately before the person's 
death, the person had been the owner of the right. 
(3) A licence granted in respect of future layout design rights 
by the prospective owner of those rights binds each of the 
prospective owner's successors in title to the prospective 
interest in the rights to the same extent as the licence was 
binding on the grantor. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 44 
89. AssignD1ents and licences of layout design rights­
(1) Layout design rights are personal property and, subject to 
this section, are capable of assignment and may pass by will or 
by operation of law. 
(2) An assignment of layout design rights may be limited in 
any way, including anyone or more of the following ways,-
(a) So as to apply to one or more of the classes of acts that, 
.by virtue of this Act, the owner of the layout design 
rights has the exclusive right to do (including a class 
of acts that is not separately specified in this Act as 18 Layout Designs IP IN 11 INZL/LI 1 
Page 19 
1994, No. 116 
being comprised in layout design rights but falls 
within a class of acts that is so specified): 
(b) So as to apply to part of the protection period of the 
layout design in which tne layout design rights 
subsist. 
(3) An assigrnnent of layout design rights, whether total or 
partial, does not have effect unless it is in writing signed by or 
on behalf of the assignor. 
(4) A licence granted in respect of a layout design right by 
the owner of the right binds every successor in title to the 
interest in the right of the grantor of the licence, except-
(a) A purchaser in good faith for valuable consideration and 
without notice, actual or constructive, of the licence; 
or 
(b) A person deriving title from such a purchaser-
to the same extent as the licence was binding on the grantor. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 45; 1962, No. 33, 
s. 56 (4) 
40. Groundless legal proceedings-( 1) Subject to this 
section, where a person COIllIllences proceedings alleging an 
infringement of layout design rights in an eligible layout design, 
a court of competent jurisdiction may, on the application of 
anr person against wh0II1: the proce~d~gs are brought, if it is 
satIsfied that the proceedmgs are unJustIfied,- . 
(a) Make an order striking out the proceedings: 
(b) Make an order for the payment of damages for any loss 
suffered by the person against whom the proceedings 
were brought. 
(2) A court shall not grant relief under this section if the 
defendant proves that the acts in respect of which the 
proceedings were brought constituted, or if done, would have 
constituted, an infringement of the layout design rights 
concerned. 
(3) No proceedings may be commenced under this section 
against a barrister or solicitor of the High Court of New 
Zealand in respect of any act done in his or her professional 
capacity on behalf of a client. 
Cf. Circuit Layouts Act 1989 (Aust.), s. 46; Copyright, 
Designs and Patents Act 1988 (U.K.), s. 253 
41. Atnendtnents to Copyright Act 1962-( 1) Section 2 (1) 
of the Copf!ight Act 1962 is hereby amended by adding to the 
definition of the term "artistic work" (as amended by section 2 
of the Copyright Amendment Act 1985), after paragraph (c), IP IN 11 INZL/LI 1 
Page 20 
1994, No. 116 Layout Designs 19 
the words "but does not include a layout design or an 
integrated circuit within the meaning of section 2 of the Layout 
Designs Act 1994". 
(2) The Copyright Act 1962 is hereby amended by repealing 
section 37, and substituting the following section: 
"37. Jurisdiction-The Tribunal shall have such jurisdiction 
as is conferred on it by-
"(a) This Act or any regulations or Order in Council made 
under this Act; or 
"(b) The Layout Designs Act 1994." 
42. AInendInent to COIDInerce Act 1986-(1) The 
Commerce Act 1986 is hereby amended by repealing section 
45 (as substituted by section 16 (1) of tne Commerce 
Amendment Act 1990), and substituting the following section: 
"45. Exceptions in relation to intellectual property 
rights-( 1) Nothing in this Part of this Act, except sections 36, 
36A, 37, and 38 of this Act, applies-
"(a) To the entering into of a contract or arrangement or 
arriving at an understanding in so far as it contains a 
provision authorising any act that would otherwise 
be prohibited by reason of the existence of a 
statutory intellectual property right; or 
"(b) To any act done to give effect to a provision. of a 
contract, arrangement, or understanding referred to 
in paragraph (a) of this subsection. 
"(2) For the purposes of subsection (1) of this section, a 
statutory intellectual property right means a right, privilege, or 
entitlement that is conferred, or acknowledged as valid, by or 
under-
"(a) The Patents Act 1953; or 
"(b) The Designs Act 1953; or 
"(c) The Trade Marks Act 1953; or 
"(d) The Copyright Act 1962; or 
"(e) The Plant Variety Rights Act 1987; or 
"(f) The Layout Designs Act 1994. 
"(3) For the purposes of subsection (2) of this section,-
"(a) A person who has applied for a patent in accordance 
with the Patents Act 1953 and filed the complete 
specification in relation to the application shall, until 
the application is deterrnined, be deemed to have 
been granted the patent to which the application 
relates: 20 Layout Designs IP IN 11 INZL/LI 1 
Page 21 
1994, No. 116 
"(b) A person who has made an application for the 
registration of a design in accordance with section 7 
of the Designs Act 1953 shall, until the application is 
determined, be deemed to be the registered 
proprietor of the design: 
"(c) A person who has made an application in accordance 
with section 26 of the Trade Marks Act 1953 for 
registration of a trade mark shall, until the 
application is determined, be deemed to be the 
registered proprietor of the trade mark: 
"(d) A person who has made an application in accordance 
with section 5 of the Plant Variety Rights Act 1987 
shall, until the application is determined, be deemed 
to have been granted the plant variety rights to 
which the application relates." 
(2) Section 16 of the Commerce Amendment Act 1990 is 
hereby consequentially repealed. 
This Act is administered in the Department of Justice. 
WELLINGTON, NEW ZEALAND: Published under the authority of the 
New Zealand Government-l 994 
58800C-94jNS IP IN 11 INZL/LI 1 
Page 22 
1995/78 
THE LAYOUT DESIGNS (ELIGIBLE COUNTRIES) ORDER 1995 
CA THERINE A. TIZARD, Governor-General 
ORDER IN COUNCIL 
At Wellington this 10th day of April. 1 995 
Present: 
THE RIGHT HON. J. B. BOLGER PRESIDING IN COUNCIL 
PURSUANT to section 37 of the Layout Designs Act 1 994, Her Excellency 
the Governor-General, acting by and with the advice and consent of the 
Executive Council, hereby makes the following order. 
ORDER 
1. Tide and cotntnencetnent-( 1) This order may be cited as the 
Layout Designs (Eligible Countries) Order 1995. 
(2) This order shall come into force on the day after the date of its 
notification in the Gazette. 
2. Eligible countries-The countries specified in the Schedule to this 
order are hereby declared to be eligible countries for the purposes of the 
Layout Designs Act 1994. 
Price Code: 3-BX IP IN 11 INZL/LI 1 
Page 23 
2 Layout Designs (Eligible Countries) Order 1995 1995/78 
Antigua and Barbuda 
Argentina 
Australia 
Austria 
Bahrain 
Bangladesh 
Barbados 
Belgium 
Belize 
Brazil 
Brunei Darussalam 
Canada 
Chile 
Costa Rica 
Cote d'Ivoire 
Czech Republic 
Denmark 
Dominica 
Dominican Republic 
Finland 
France 
Gabon 
Germany 
Ghana 
Greece 
Guyana 
Honduras 
Hong Kong SCHEDULE 
ELIGIBLE COUNTRIES 
Hungary 
Iceland 
India 
Indonesia 
Ireland 
Italy 
Jamaica 
Japan 
Kenya 
Korea 
Kuwait 
Luxembourg 
Macau 
Malaysia 
Malta 
Mauritius 
Mexico 
Morocco 
Myanmar 
Namibia 
Netherlands (and the 
Netherlands Antilles) 
Nigeria 
Norway 
Pakistan 
Paraquay 
Peru 
Philippines Portugal 
Romania 
Saint Lucia 
Saint Vincent and the 
Grenadines 
Senegal 
Singapore 
Slovak Republic 
South AfrIca 
Spain 
Sri Lanka 
Suriname 
Swaziland 
Sweden 
Tanzania 
Thailand 
Trinidad and Tobago 
Tunisia 
Turkey 
Uganda 
United Kingdom 
United States of 
America 
Uruguay 
Venezuela 
Zambia 
Zimbabwe 
MARIE SHROFF, 
Clerk of the Executive Council. 
EXPLANATORY NOTE 
This note is not part of the orderJ but is intended to indicate its general effect. 
This order declares a number of countries to be eligible countries for the purposes of the 
Layout Designs Act 1994. 
The Layout Designs Act 1994 confers statutory protection on owners of layout design 
rights in eligible layout designs. 
Section 2 of the Act dermes an eligible layout design to be an original layout design­
(a) The maker, or in relation to a jointly made layout design anyone or more of the 
makers, of which was, at the time the design was made, an eligible person; or 
(b) That was first commercially exploited in New Zealand or in an eligible country. 
Section 2 dermes the term "eligible person" to include a citizen of an eligible country or a 
person who is domiciled or resident in an eligible country or a body corporate incorporated 
m an eligible country. 
The order lists the countries that are eligible countries for the purposes of the Act. 
Section 37 of the Act provides that a country may not be declared to be an eligible country 
unless-
(a) It is a party to a treaty or convention relating to the protection of layout designs to 
whlch New Zealand is also a party; or 
(b) The Governor-General is satisfied that, if the country is not a party to such a treaty or 
convention, provision is or will be made under the law of that country under which IP IN 11 INZL/LI 1 
Page 24 
1995/78 Layout Designs (Eligible Countries) Order 1995 3 
adequate protection is or will be given to layout designs made by persons referred 
to in paragraph (a) or paragraph (b) of the defmition of the tenn ' ehgible person" in 
section 2 of the Act and to layout designs frrst commercially exploited in New 
zealand. 
The countries listed are parties to the Marrakesh Agreement Establishing the World Trade 
Organization to which New Zealand is also a party. 
Issued under the authority of the Acts and Regulations Publication Act 1989. 
Date of notification in Gazette: 11 April 1995. 
This order is administered in the Department of Justice. 
WELLINGTON, NEW ZEALAND: Published tmder the authority of the 
New Zealand Govemment-1995 
599040 -95/NS 