The usual procedure for securing registration of a design is summarised below with reference to the flowchart at the end of this section. Typical time periods are indicated, but it should be appreciated that the process of achieving registration can be accelerated if it appears pending rights are being infringed.
If at any stage you decide not to continue the application may be abandoned. Your design will not be recorded publicly on the Designs Register until it has been accepted for registration.
Before you File
A design registration should protect your design in the form in which it is marketed. It is therefore advisable that before the design application is filed, you develop the design of the article to a stage where it is ready for production and marketing. Note, however, that for a design to be registrable it must be novel (i.e. it must not have been previously applied to your goods). It is therefore important to avoid disclosure of the design before a design application is filed.
A design search is also recommended before you file the application for two main reasons:
- To assess the novel features of a design and whether the design can be registered; and
- To ascertain whether you are likely to infringe any current design registrations (or other intellectual property rights such as copyright) if you make the product.
A full clearance search includes a search of the Designs Register and a search of the internet for designs which are in use, but aren’t registered, thereby avoiding the risk of inadvertently breaching the Fair Trading Act. The IPOL Wizard includes an option to request a full clearance search before your application is lodged at the Intellectual Property office (IPONZ). Alternatively, if you would like assistance with a design search before using the IPOL Wizard, please contact an IPOL advisor.
Filing the Application
The IPOL wizard has been developed to guide you through the application process. Once you have completed the IPOL wizard you will receive an email from IPOL providing you with details of the application or applications that you have filed.
As noted above, only once the application is filed is it safe for you to disclose the design, conduct market research, publish details relating to the design or offer it for sale. Marking an article and related literature with the application number acts as a deterrent to would-be copiers.
The following information will be required in order to complete the application process:
- Full details of the owner of the design, including contact details, full legal name, and nationality or country of incorporation; and
- Accurate images of the product, showing the unique features of the design which you will be marketing, in one of the following formats - .gif, .jpg, .doc, .pdf or .tif
Examination
Once the application has been filed it will be examined by an examiner at IPONZ within one month. IPONZ examiners will assess the registrability of the design and will conduct a search of the Designs Register.
Often no objections are raised, and the application proceeds straight to registration.
If the examiner has an objection to the application a Compliance Report will issue. The Compliance Report will detail the examiner’s concerns and will give the applicant a chance to respond to those objections. The Compliance Report is not the end of the process and in many cases a well reasoned response will convince an examiner to withdraw the objection(s) and issue the Certificate of Registration.
The Compliance Report will include one or more deadlines for response. IPOL is not responsible for monitoring any deadlines. Failure to respond to IPONZ within a specified deadline may result in the application falling abandoned.
If at any time you require assistance with a Compliance Report you can contact IPOL at help@ipol.co.nz. IPOL will consider the Compliance Report for a fee of NZ$50.00 +GST and will provide you with recommendations on how to proceed. In some cases IPOL may recommend that you discuss your application with a legal advisor at James & Wells Intellectual Property.
Registration / Publication
Details of an application are not publicly available until the design is registered, at which time the application will be published on the IPONZ website (www.iponz.govt.nz) and in the Patent Office Journal. The content of abandoned applications is never disclosed.
Proceedings for infringement cannot be taken until the design is registered.
Term and Renewal
The maximum term of a design registration in New Zealand is 15 years from the date of filing.
This is subject to the payment of renewal fees in the 5th and 10th years. You can arrange for IPOL to remind you when renewal fees are due.
Design Applications Overseas
As registered designs are territorial, separate applications must be filed in each country in which you want to protect the design.
If you file a design application overseas within six months of filing your New Zealand design application, the overseas application can be given the New Zealand filing date under an International Convention. This procedure enables you to deter competitors from registering or using your recently launched New Zealand design in other countries.
However, in most cases, valid overseas applications may be filed after this date if the design has not been publicly disclosed.
