Navigating the New Zealand Design Examination Process

Obtaining Design right protection involves a structured legal examination process governed by the Intellectual Property Office of New Zealand (IPONZ).

Filing and Priority Claims

The process begins formally when we submit your application to IPONZ. At this stage, the primary objective is to ensure that the application meets all mandatory legal requirements. This is not simply an administrative checkbox exercise, but the quality of the initial filing dictates the smoothness of the rest of the process. We ensure that the representations (drawings or photographs) of your design are accurate and that the applicant details are correctly recorded.

For our international clients, or New Zealand clients who have already filed abroad, this stage involves a critical strategic component, i.e. the “Priority Claim”. If you have filed an application for the same design in an overseas jurisdiction, we can claim that original overseas filing date for your New Zealand application. However, strict time limits apply. To validly claim priority, the New Zealand application must be filed within six months of the corresponding overseas application. Missing this window by even a day can result in the loss of your priority rights, potentially exposing your design to novelty objections based on your own prior disclosures. We carefully docket these dates to ensure your international priority is preserved.

The First Examination

Once filed, your application enters the queue for examination. IPONZ operates with efficiency in this regard; the first examination typically takes place within 15 working days of the application being received.

During this phase, an examiner reviews your application to determine if it is “in order for registration”. They are checking against the statutory requirements of the Designs Act to ensure the design is new, original, and properly classified.

There are two possible outcomes from this first examination:

• Immediate Acceptance- If the examiner finds no issues, the application is considered compliant immediately. You will receive an “Examination Complete” report, signaling that the design is ready for registration.
• Objection- If the examiner identifies legal or procedural issues such as the design lacking novelty or the drawings being unclear, the application will not be considered registrable at this stage. Instead of an acceptance, we will receive an “Examination Report”.

The Examination Report

Receiving an Examination Report is a common part of the intellectual property process and does not mean your design has been permanently rejected. It simply means there are hurdles we must clear before the registration can be granted.

The report will outline exactly why the design cannot currently be registered and will specify the amendments or documents required to meet the conditions of registration. This could range from simple formalities, like correcting a convention priority document, to substantive legal arguments regarding the originality of your design compared to prior art.

When an Examination Report is issued, a statutory clock begins ticking. We are given a deadline of 12 months to overcome the objections and place the application in order for acceptance. This 12-month period provides ample time for us to prepare legal submissions, amend the application, or negotiate with the examiner. If complex issues arise that require more time, it is possible to apply for an extension of up to three months, provided the request is properly justified.

Our role during this phase is to analyze the examiner’s objections and draft a substantive response. We handle all correspondence with the Office, ensuring that every legal point raised in the report is addressed comprehensively.

The Hearing Process

In the majority of cases, objections are resolved through written correspondence and amendments. However, there are instances where a disagreement regarding the registrability of a design persists. If the matters related to registrability cannot be resolved through standard exchange, we have the right to request a formal hearing.

A hearing is a formal legal proceeding where we argue your case before an Assistant Commissioner. This is a significant step that requires careful preparation. A hearing fee must be paid at the time the request is made. Following the hearing, the Assistant Commissioner will consider the legal arguments and issue a written decision.

It is important to approach hearings with a clear strategy, as the Assistant Commissioner has the power to issue orders regarding the payment of costs. This means that legal costs and disbursements could be awarded for or against you depending on the outcome. We will always advise you on the merits of your case and the potential risks before recommending a move to a formal hearing.

Registration and Certification

Once all objections have been overcome and your application is found to be in order, we will receive an “Examination Complete” report. This marks the end of the examination phase.

Provided any requests for the postponement of registration have expired, the Registrar will then proceed to issue the Certificate of Registration. This is the physical document that proves your ownership of the design rights.

A crucial detail for rights holders to understand is the “Date of Registration”. Even though the certificate is issued at the end of the process, which could be months after filing, i.e. the legal date of registration is backdated. It is taken from the first application date, not the date the certificate is issued. This ensures that your protection is continuous from the moment we filed your application, covering the entire period of examination.

Post-registration validity and visibility

Securing the certificate is a major milestone, but it is not a guarantee of absolute invulnerability. A registered design can still be challenged. The Commissioner or the High Court has the power to cancel a registration or correct the register details if it is proven that the registration was granted in error.

Common grounds for cancellation include proof that the design was not actually “new or original” at the time of filing, or that the design was granted to a person who was not entitled to apply for it (for example, if the rights belonged to an employer rather than the applicant). If a registration is successfully cancelled, the owner loses the right to sole use of that design. This highlights the importance of our pre-filing diligence; we work to ensure that the applicant is the correct legal entity and that the design meets the novelty threshold to withstand future challenges.

Once registered, your design enters the public record. The registration is advertised in the official monthly Journal, notifying the public and your competitors of your exclusive rights.

Long-Term Maintenance and Renewals

Design rights in New Zealand are not perpetual; they must be maintained. The initial registration period protects your design for five years. To keep the protection in force, the registration must be renewed.

There are two key renewal milestones-

• 5 Years from the date of registration.
• 10 Years from the date of registration.

These dates are calculated from that original “Date of Registration” (the filing date). We manage these deadlines in our docketing system to ensure you never miss a renewal. It is critical to pay the renewal fees on time. While there is a payment window, the fees must be paid within 6 months of the renewal date. Failure to pay within this window will result in the registration lapsing, causing the immediate loss of your exclusive rights.

By entrusting your design applications to us, you ensure that every step of this process, from the 15-day initial check to the 10-year renewal, is handled with professional care, securing the visual identity of your products for the long term.

Contact us today for a free consultation.