COUNTRY : NEW-ZEALAND
CAPITAL : CANBERRA
LANGUAGE : ENGLISH
MEMBER : PARIS CONVENTION, WTO-TRIPS, BERNE CONVENTION, WIPO
Following can file Design Applications:
a). Author of the Design
b). Employer of the author if Design made during course of employment
c). Person contracting the author to make the design
d). Person to whom the author has assigned the design in writing.
2 or more persons owning interests in the design must apply jointly.
• Copy of the drawings;( six views such as front, rear, left side, right side, top plan and bottom plan views. And additional drawings such as perspective and cross-sectional views also may be submitted) - photographs in jpg format
• The full name and address of each creator;
• The full name and address of each applicant;
• The name of article to which the design is applied;
• The filing date, application number and country of the priority application; and
• The priority document
• Statement of Novelty in respect of the articles to which industrial design is applied to. However, not required while registering wallpaper, lace or textile articles.
• Full payment of fees.
Statement of Novelty: Novelty refers to originality, something new or unusual. In this context, if the Patent Office so deems necessary, may direct the applicant to endorse the application and the representations with a brief statement of novelty that he claims over the designs so submitted for registration.
Prior Disclosure destroys novelty of the Design so extreme care has to be taken to maintain secrecy of the Design. However, in New Zealand, the applicant can file the application within 12 months after disclosure which will still retain novelty.
An ordinary application does not claim priority.
Convention application calming priority .
A convention application claims priority of an application filed previously in a convention country. (Deadline for claiming priority for a design application in New Zealand is 6 months from the filing date of the priority application)
To come under the scope of registration, a Design should:
i. Be new and / or original
ii. Not have been disclosed to the public anywhere by publication in tangible form or by use in any other way prior to the filing date or where applicable, the priority date of the application for registration to which a 12 month exception is provided.
iii. Be significantly distinguishable from known designs or combination of known designs.
iv. Not contain scandalous or obscene matter, or be contrary to public order or morality.
v. Not be a mere mechanical contrivance.
vi. Be applicable to an article, should appeal to the eye.
Original here means, originating from the author of such a design and includes those cases which though old in themselves , are new in their application as well.
Aspects of Designs registrable:
• 2 Dimensional, 3 Dimensional, General Appearance of a design.
• Decoration, Shapes, Lines, Colours, Contours.
• Combination of all of the above.
The following kinds of Designs are not registrable:
• Designs which are not new or original
• Designs which have been disclosed to the public anywhere in the world by publication in a tangible form or by use or in any other way prior to the filing date.
• Designs which are not significantly distinguishable from known designs or combination of known designs or
• Comprises or contains scandalous or obscene matter.
• No design that is contrary to public order or accepted principles of morality can be registered.
Inventions pertaining to the following:
• Discoveries, Scientific Theories & Mathematical methods.
• Aesthetic creations.
• Substances already existing in nature and nuclear materials.
• Schemes, Rules, Methods for performing mental acts, playing games, doing business as well as Presentation of Information.
• Programmes for Computers.
• Inventions contrary to public order & morals.
• Methods of treatment by surgery or therapy on humans and animals.
• Prejudicial to the Interest or Security of the Nation.
Designs are examined for formalities. Amendments if any to be carried out by the applicant are informed and applicant is to amend the same within a stipulated time failing which, the application is deemed abandoned.
Substantive examination regarding novelty, individual characteristics and resemblance to prior registered marks are carried out by way of searched by the examiner to ascertain the same.
Designs meeting all the requirements are recorded and registered. Certificate of registration is issued to the applicant. Designs are then published.
At any time post registration of a design, interested persons may apply to the commissioner requesting a grant of compulsory license on the grounds that he design is not applied in New Zealand by any industrial process or means in respect of which it is registered to such an extent as is reasonable.
Search and Filing:
Conducting a search prior to filing the design application is always advised to rule out conflict with prior registered marks. Our Attorney will assist you in search, filing and protection of the Design application in New Zealand.
Steps to Registration:
i. Finding out whether such a design has been registered previously.
ii. Preparing a representation of the design
iii. Identifying the class of design.
iv. Providing a statement of novelty.
v. Including a disclaimer that the design has not been in the public domain at any point in time.
vi. Claiming a priority date if the design Is registered in other countries.
vii. Determining the fee to be paid.
viii. Ensuring all enclosures are attached.
ix. Complying with objections if any.
x. Providing full details pertaining to contacts and addresses.
Several designs may be combined in one multiple application as long as the products belong to the same class.
Design registrations are protected for a maximum total duration of 15 years