By its very nature, a registered trademark must distinguish your business’ goods and services from others in the market. For this reason, the Intellectual Property Office of New Zealand (IPONZ) cannot register a trade mark that has no distinctive character. For example, a trade mark that merely describes your business’s goods or services will usually be difficult to register, although not impossible. This article explains why you should avoid adopting or registering a trade mark that contains a descriptive term.
Descriptive Trade Marks
According to trade mark law, IPONZ cannot register a trade mark with no distinctive character. A trade mark is generally not distinctive if it describes a characteristic of the goods or services it protects. This includes descriptions of the:
- kind;
- quality;
- intended purpose;
- value;
- geographical origin; or
- some other characteristic of your goods or services.
Relevantly, trade mark law prevents the registration of trademarks containing descriptive terms since other traders would generally wish to use the terms to describe their goods or services. For example, any trader in the following industries would benefit from using the following descriptive marks:
- ‘delicious food’ for a takeaway shop;
- ‘global’ for a shipping company; and
- ‘hoppy’ for craft beer.
In saying that, a trade mark containing a descriptive word or phrase will usually become registrable if you combine it with a unique design, logo, or other distinctive words.
How Distinctive Does Your Trade Mark Need to Be?
On a practical level, you should avoid applying to register a descriptive trade mark since this can save you the costs and time of unsuccessfully registering your trade mark.
Nevertheless, your trade mark must be distinctive enough to indicate your business as the origin of your goods or services to the average consumer and other traders. So, for example, your trade mark can include your business name alongside a descriptive phrase like ‘fresh fruit’. This way, you can increase the uniqueness of your trade mark and avoid IPONZ rejecting it for being merely descriptive.
Distinctiveness Through Use
If your trade mark needs to be sufficiently distinctive by its nature, you may also be able to demonstrate to IPONZ that your trade mark is distinctive through your use of it. This means it may be distinctive if you can prove that customers associate and recognise your trademark with your business. In saying that, your trade mark must have become distinctive through your use of it before you filed your trade mark application with IPONZ
How much evidence you need to provide will depend on your situation. The more descriptive your trade mark is, the more convincing your evidence needs to be. Some evidence you could provide includes:
- examples of how you use your trade mark in New Zealand;
- supporting declarations from other traders in the industry; or
- customer surveys measuring the distinctiveness of your trade mark.
In any event, you should speak with an experienced trade mark lawyer before you go through the trade mark registration process. A lawyer can give you a better indication of the distinctiveness of your trade mark and whether you may face any issues concerning your trade mark application during the registration process.
Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.
Key Takeaways
To register your trade mark with IPONZ, you must ensure your trade mark does not merely describe the goods and services your business provides. This includes descriptions of the:
- kind;
- quality;
- intended purpose;
- value;
- geographical origin; or
- some other characteristic of your goods or services.
This is because IPONZ will not register applications that contain descriptive terms. To avoid this, you should:
- accompany a descriptive mark with other unique features of your business’ brand, such as a business name or logo; or
- provide evidence that you have used your descriptive mark, and it has subsequently gained a distinctive quality in the market.
If you need help with the distinctiveness of your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.
Frequently Asked Questions
A trade mark is a sign you use to distinguish your business’s goods and services from others in the market.
If you successfully register your trade mark in New Zealand, you gain the exclusive right to use the trade mark throughout New Zealand to promote your goods and services. This means that if someone copies your trade mark, you can prevent them from infringing on your intellectual property rights.
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