Managing Your International Design Rights

For businesses operating in New Zealand, the visual appearance of a product is often a key differentiator, driving consumer preference and brand value. However, a common misconception among innovators is that a single registration provides worldwide protection. For businesses with global ambitions, securing design rights across multiple jurisdictions is a critical strategic step.

The Paris Convention and Priority Dates

The cornerstone of international design protection is the Paris Convention for the Protection of Industrial Property. This international agreement allows creators to register their designs in multiple countries without having to file every application simultaneously on day one. Instead, it provides a vital six-month window of opportunity.

When our firm files your initial design application in New Zealand, we establish what is known as a “priority date.” Under the Paris Convention, you have exactly six months from this filing date to apply for the same design in other member countries. By doing so, your later overseas applications are treated as if they were filed on the same date as your New Zealand application.

This mechanism is essential for maintaining the “novelty” of your design. Without claiming priority, a disclosure of your design in New Zealand (such as a product launch) could invalidate your subsequent applications overseas because the design would no longer be considered “new” in those jurisdictions. By leveraging the six-month priority window, we allow you to test the local market and finalize your export strategy while retaining the legal right to backdate your global protection.

Our team manages this strict timeline on your behalf. We docket the six-month deadline from your first filing and coordinate the preparation of all necessary filings for every jurisdiction you wish to enter, ensuring you never miss the window to claim priority.

Protecting New Zealand Designs Internationally

If you have already applied to register your design in New Zealand, you have established the foundation for your global portfolio. The New Zealand application serves as the “base” for your later applications in other countries. However, moving from a domestic application to an international one requires the transfer of official documentation between intellectual property offices.

When applying in other jurisdictions, foreign intellectual property offices will typically require proof of your initial New Zealand filing to grant a priority claim. This proof must be in the form of a “certified copy” of your New Zealand design application. It is important to note that a standard photocopy or a simple printout of the application is not sufficient for these legal purposes.

As your intellectual property agents, we handle the request for these certified copies directly through the Intellectual Property Office of New Zealand’s (IPONZ) case management system. We ensure that the certified documents are generated correctly and delivered to the relevant foreign associates or offices in a timely manner.

It is important to recognize that each country operates under its own sovereign laws and has unique requirements for registering designs. While IPONZ manages the local register, they are not able to assist with applications in other countries. Consequently, navigating the specific legal nuances of foreign jurisdictions, such as differing views on functionality, ornamentation, or graphical representation, requires local expertise. We manage this by engaging the services of trusted local attorneys in each target jurisdiction. We act as your central point of contact, coordinating with these international partners to ensure your New Zealand design meets the specific local requirements of every country where you seek protection.

Securing Protection in New Zealand for International Designs

For our international clients, or New Zealand businesses that have initiated their design strategy overseas, we offer comprehensive services to register foreign designs within New Zealand. If you have applied to register a design in a country that is a member of the Paris Convention (a “convention country”), we can file a corresponding application in New Zealand that claims the priority date of that first overseas application.

This effectively backdates your New Zealand rights to the date of your original filing abroad, preventing third parties from registering your design or capitalizing on your product launch in the interim. To successfully claim this priority, specific and rigorous documentation standards must be met.

The Requirement for Certified Copies

A critical point of failure in many international applications is the provision of incorrect documentation. To support a convention priority claim in New Zealand, we must provide a certified copy of the application from the intellectual property office where it was first filed.

Clients must be aware that providing a copy of the registration certificate is not sufficient. The New Zealand regulations specifically require a certified copy of the application itself. This document proves exactly what was filed and when, establishing the validity of the priority claim. We work with your foreign counsel to obtain the correct certified application documents to ensure they meet IPONZ’s strict criteria.

Translation Requirements

The global nature of intellectual property means that many priority documents originate in languages other than English. If the original application documents are not in English, the New Zealand regulations require a verified translation.

This applies to the entire document, including the certification stamp or statement provided by the foreign intellectual property office. We manage the translation process, ensuring that a verified translation of both the application and the certification is prepared and submitted. This ensures there are no administrative barriers to your registration proceeding.

Timing of Documentation

While the application claiming priority must be filed within the strict six-month window, the supporting documentation does not necessarily need to be available at the exact moment of filing. The certified copy of the foreign application and any necessary translations can be provided during the examination phase of your New Zealand application.

This flexibility allows us to secure your filing date immediately to meet the six-month deadline, even if the official certified copies from the foreign office are still being processed. We then manage the submission of these documents during the examination process to ensure the priority claim is formally ratified.

Managing Deadlines and Extensions of Time

In the world of intellectual property, deadlines are rarely flexible. The six-month period for filing a convention application is a statutory requirement derived from international treaty obligations. Missing this deadline generally means the loss of your priority claim, which can be fatal to the validity of your design if it has already been disclosed to the public.

However, New Zealand law does provide a potential safety net in specific, limited circumstances. Under Section 37A of the Designs Act 1953, it is possible to request an extension to the six-month deadline. This is not an automatic right but it is a discretionary power exercised by the Commissioner.

Requests for an extension must be formally submitted to IPONZ, detailing the specific details of the application and, crucially, the reasons why the extension is required. As your legal representatives, we can draft and submit these requests on your behalf, advocating for the exercise of the Commissioner’s discretion.

It is vital to understand that the Commissioner applies a high threshold for granting such extensions. An extension is likely to be refused if the delay was caused by:

• Insufficient Time Margins- Failing to allow enough time for the delivery of documents or information.
• Lack of Diligence- A failure to act with due diligence and prudence regarding the meeting of the deadline.
• Undue Delay- Any undue delay in making the application, requesting the extension, or prosecuting the application.

That said, administrative oversight or leaving things to the last minute are generally not accepted as valid reasons for an extension. This highlights the importance of proactive portfolio management. Our firm utilizes sophisticated docketing systems to track these international deadlines well in advance, ensuring that we are never in a position where we must rely on the uncertain discretion of a Section 37A request. We ensure that instructions are confirmed and filings are prepared with ample time to spare, securing your priority rights without risk.

Why is Professional Management Essential?

The process of international design registration involves more than simply filling out forms. It requires the coordination of priority dates across different time zones, the procurement of specific certified legal documents from foreign government bodies, the management of verified translations, and the adherence to strict statutory deadlines.

Attempting to manage this process without professional assistance carries significant risk. A rejected priority claim due to incorrect documentation (such as filing a registration certificate instead of a certified application) can lead to the total loss of protection for a product in a key market. Furthermore, the inability to rectify a missed deadline due to a lack of “due diligence” can render a design public property.

Our firm acts as the central hub for your global design strategy. We handle every aspect of the process, from the initial New Zealand filing to the coordination of global applications. We obtain the necessary certified copies through official channels, ensure all translations are verified and compliant, and rigorously monitor the six-month priority window.

Whether you are a New Zealand business looking to export your innovative designs to the world, or an international company seeking to protect your assets in the New Zealand market, our team provides the technical expertise and administrative precision required to secure your rights. We ensure that your designs remain exclusively yours, wherever your business takes you.

Contact us today for a free consultation.