Maintaining a Design Registration in New Zealand

Securing the initial registration is only the first step. To ensure your rights remain enforceable and your asset retains its value, you must actively manage and maintain your design throughout its lifespan. Neglecting these administrative duties can lead to the lapsing or unintentional abandonment of your rights.

Renewing your design and securing long-term protection

A design registration in New Zealand is granted for an initial period of 5 years, calculated from its filing date (or the earliest convention priority date). This protection is not indefinite, i.e. to keep it in force, you must renew the registration.

You are entitled to renew your design for two additional 5-year terms, allowing for a maximum total protection period of 15 years. We manage these deadlines in our docketing system to ensure you never miss a renewal window.

The renewal process is time-sensitive. You can renew your design registration up to 6 months after the renewal due date. However, if this final deadline is missed, the registration will lapse, and your exclusive rights will be lost. We handle the entire renewal process through the IPONZ online case management facility, ensuring fees are paid correctly and on time.

Restoring a lapsed or abandoned design

If a deadline is missed, all is not necessarily lost. The Designs Act provides mechanisms to “restore” a design that has unintentionally lapsed or been abandoned.

Restoring a Lapsed Registration

If you miss the 6-month window for renewal, your design registration will lapse. However, you have a further opportunity to save it. You can request the restoration of your registration within 12 months of the date it lapsed. If this request is successful, you will be granted time to pay the outstanding renewal fees, and the design will be restored to the register.

Restoring an Abandoned Application

During the application phase, your design application can become “abandoned” if it is not in order for registration within 15 months of filing. If this happens, you can request restoration within 3 months of the abandonment date. A successful restoration returns the application to “under examination” status, giving us more time to resolve outstanding objections.

In both cases, restoration is not automatic. We must submit a formal statement and evidence proving that the failure to meet the deadline was unintentional. This often requires a statutory declaration or affidavit explaining the circumstances of the delay. Our firm is experienced in drafting these submissions to meet the evidentiary standards required by the Commissioner.

Managing Ownership and Representation

Over the 15-year life of a design, business structures often change. It is critical that the design register accurately reflects the current legal owner of the rights.

Change of Ownership

If you sell your design, or if it is transferred to a new entity as part of a corporate restructure, we must record this “Change of Ownership” with the IP Office. This can only be done for a registered design, not for an application that has lapsed or expired. We file the necessary requests along with digital evidence of the transfer, such as a Deed of Assignment or a Sale and Purchase Agreement.

Change of Agent

You may also need to update who is authorized to act on your behalf. As your new agents, we can file a request to “Change Agent,” supported by an “Agent Authorization” document. This ensures that all future correspondence regarding your design is sent directly to us.

Licensees and Mortgagees

A design is a property asset that can be licensed or used as security for a loan. You can formally record these interests on the register. We can add details of a licensee (someone authorized to use your design) or a mortgagee (a party with a financial interest in the design) to the registration record. This provides public notice of these rights and protects the interests of all parties involved.

Updates and Corrections

We can also manage routine updates to your design file. This includes:

• Address Changes- Updating the address for service, business address, or owner name if they change. Note that an address for service must always be in New Zealand or Australia.
• Correcting Errors- If there is a clerical error or omission in the design application or registration, we can file a request to correct it.
• Changing Deferred Registration- If you initially requested to defer the registration of your design (to keep it secret before launch), we can change this deferment period. You can reduce the deferment to 0 months to register immediately or extend it up to the maximum of 15 months.

Cancellation, Withdrawal, and Division

Sometimes, strategic business decisions require you to end or split a design right.

• Cancellation- You can request to voluntarily cancel your registered design at any time. This immediately terminates all rights. If there are recorded licensees or mortgagees, we must provide evidence of their consent to the cancellation.
• Withdrawal- Before a design is registered, you can withdraw the application. This is a final action and the status cannot be reinstated.
• Division- If you have filed a design application that covers multiple variations, you can “request division” to split it into multiple separate applications. Each new divisional application preserves the original filing date but requires its own application fee.

Enforcing your rights

Once registered, the responsibility for protecting your design lies with you. We advise marking your products or packaging with the design registration number (e.g., ‘NZ Des. No. xxx’) to put competitors on notice of your rights.

If you suspect your design is being copied, do not act hastily. Unjustified threats of legal action can have negative consequences. We recommend seeking our professional advice immediately. We can assess the infringement and send a formal letter to the other party asserting your rights.

By keeping your design registration active and accurate, you ensure that this powerful form of intellectual property continues to add value to your business for its full 15-year term.

Contact us today for a free consultation.