Application for Design in New Zealand

Filing an application for design registration involves specific legal nuances and technical requirements that can be complicated to navigate without professional assistance.

Confidentiality before application

The most critical step in the design registration process happens before we even file the application. It is imperative that you do not publish your design anywhere before the application is submitted. “Publishing” includes selling the product, displaying it on a website, showing it at a trade show, or even discussing it without a non-disclosure agreement.

If your design is disclosed to the public prior to the filing date, it is no longer considered “novel” in the eyes of the law. Consequently, your application may be unsuccessful. If you are currently in the development phase, we strongly advise you to contact us immediately so we can secure your filing date before any public launch occurs.

The “Representations”

The core of any design application is the visual evidence provided to the examiner. In legal terms, these are called “representations.” These are not merely marketing photos, i.e. they are technical images that must definitively show the features of the design from various angles.

We assist in preparing high-quality representations that meet the strict draftsperson standards required by the IP Office. Representations can take the form of line drawings, photographs, or digital renderings. Regardless of the medium chosen, the images must be visually clear, high quality, and suitable for reproduction on an A4 sheet.

If we proceed with line drawings, they must be executed with precision and must not contain any written specifications, dimensions, or descriptive text. If photographs are used, the product must be photographed against a plain, neutral background with no other items or clutter visible in the frame. The goal is to show the whole product clearly without any obstruction.

A crucial aspect of the representation process is ensuring that the design is fully perceptible from every angle. We typically submit multiple images showing different “views” of the article, such as the front view, top view, perspective view, or left side view. It is a strict requirement that each image is explicitly labelled with the view it represents, and this label must be visible within the image file itself.

Our team ensures that all images are cropped to remove unnecessary whitespace, oriented upright, and formatted correctly as .jpg or .gif files before submission. By searching the register for similar articles, we can also gauge the standard of representations used in successful applications for products similar to yours.

The Statement of Novelty

While the representations show what the design looks like, the “Statement of Novelty” tells the examiner exactly what legal protection you are claiming. This is a formal written description that identifies the specific features of the design that are new and unique.

Drafting this statement requires legal precision. We must define the novel features using specific terminology recognized by the Designs Act. Generally, these features fall into two categories:

• Shape and Configuration- These terms refer to the three-dimensional form of the product.
• Pattern and Ornament- These terms refer to two-dimensional decorative features applied to the surface of the product.

For example, if you have designed a new blender with a unique physical form, we would draft a statement such as: “The design is to be applied to a BLENDER and the novelty resides in the features of shape and configuration as shown in the accompanying representations”. Conversely, if the design protects a graphic printed on a flat surface, such as a picture frame, the statement would claim novelty in the “features of pattern and ornamentation”.

It is important to note that a design registration protects appearance, not function. Therefore, the statement of novelty must not describe how the product works, how it is manufactured, or claim any functional advantages. There are exceptions to the requirement for a statement of novelty; specifically, applications for textiles, wallpaper, or lace do not require one.

Applicant Details and International Priority

To file the application, we must accurately record the identity of the owner. A design can be owned by a company, an individual, or other legal entities such as an incorporated society. As your agent, we act on your behalf, ensuring that the ownership details are correctly structured and that we are recorded as the address for service for all official correspondence.

If you operate internationally, we can also leverage your global intellectual property strategy. If you have already filed an application for the same design in another country that is a member of the Paris Convention, we can file your New Zealand application as a “Convention” application.

This allows us to claim the “priority date” of your original overseas application, provided the New Zealand filing occurs within 6 months of the first application. To do this, we will need to submit a certified copy of the original foreign application (not just the registration certificate) and a verified translation if the original is not in English. This effectively backdates your rights in New Zealand to the date of your first international filing.

Specific Filing Strategies

Depending on your commercial strategy, there are several specialized options we can utilize when filing your application.

Based Designs

If you already have a registered design and have created a modification of it, or if you wish to apply the same design to a different type of article, we can file what is known as a “Based Design”. This links the new application to your existing registration. The advantage is that your own prior design cannot be cited against you to disprove novelty. However, it is important to note that the registration period for the new based design will expire at the same time as the original design, meaning it will have a shorter lifespan than a completely new application.

Deferred Publication

In some industries, such as fashion, keeping a design secret until the product launch is vital. Usually, successful design applications are published in the Journal shortly after registration. However, we can request to defer the registration and publication of your design for up to 15 months from the filing date. This prevents competitors from seeing your design on the public register before you are ready to release it to the market.

Sets of Articles

While most applications are for a single article, it is possible to file a single application for a “set of articles.” This applies when the items have the same general character and are ordinarily sold or used together, such as a cutlery set containing a knife and fork that share a common design aesthetic. We can advise you on whether your products qualify as a set, which can be a more cost-effective filing strategy.

The Filing Process

We submit all applications via the IPONZ online case management facility. Our team handles the precise entry of all data to ensure compliance with the regulations.

One key administrative detail is the “Design Title”. This must be a generic name for the product, such as “picture frame” or “ironing board.” It cannot contain brand names, trade marks, or descriptive text about physical features. We ensure the title accurately reflects the article to avoid objections during the examination phase.

Once we have compiled the representations, drafted the statement of novelty, and confirmed all applicant details, we submit the application and handle the payment of government fees. Following submission, we receive immediate confirmation and a summary of the application, which enters the formal examination queue.

Next Steps

After filing, your application will be assessed by an examiner to ensure it meets all legal requirements. Our firm monitors the examination process, responds to any compliance issues raised by the Intellectual Property Office, and guides your design through to final registration. By entrusting this process to us, you ensure that the visual identity of your products is secured by a effective and legally enforceable registration.

Contact us today for a free consultation.