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A trade mark is useful because of its uniqueness and ability to link your business to the goods or services you provide. Customers use your trade marks to recognise your business, allowing you to stand out amongst your competitors. Therefore, this article will provide some legal background on this matter and explain how distinctive your trade mark needs to be.

The Purpose of a Trade Mark

A trade mark is a kind of intellectual property that can represent your business. It is a unique sign that your customers use to recognise your goods or services. Therefore, it is a ‘badge of origin’, identifying your business as the source of the goods or services you sell.

For instance, you may place your business’ logo on your products’ packaging or promotional materials to indicate to customers you are the seller of your goods.

Notably, you can use different elements to make up a trade mark that achieves this purpose, including:

  • words;
  • phrases;
  • sounds;
  • smells;
  • shapes;
  • images;
  • colours; or
  • a combination of these.

Whatever form your trade mark takes, it needs the relevant legal requirements. These can vary depending on whether your trade mark is registered or unregistered

However, if you wish to gain the most effective rights for protecting the goods or services you sell, you should register your trade mark with the Intellectual Property Office of New Zealand (IPONZ). To successfully do this, you need to meet their evaluation criteria. One specific aspect of this is that your trade mark must be distinctive.

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Measuring Trade Mark Distinctiveness

Legally, IPONZ cannot register a trade mark that has no distinctive character. What this means explicitly can vary depending on the context and exact nature of the trade mark itself. However, a trade mark is generally not distinctive if it:

  • simply describes a characteristic of the goods or services it protects; or
  • only uses signs or indications that are customary terms or part of established trade practices.

Basically, these specifications mean that if your trade mark uses common words that competitors often use, it is not distinctive. The law prevents the registration of trade marks comprised of such terms. No one business or organisation should have a monopoly on language that traders would generally wish to use to describe their own goods or services.

For example, say that you wish to register a trade mark protecting your craft beer products. Generally, you could not solely use words like “hoppy” or “sour” as your trade mark, as these are common indicators of a beer’s taste. Your competitors will want to use these to describe their own craft beer products.

How Distinctive Does My Trade Mark Need to Be?

When considering whether your trade mark is distinctive, you must do so concerning the goods or services you wish for your trade mark to protect. Your trade mark must be distinctive enough that it can indicate your business as the origin of your goods or services to the average consumer and other traders.

If you come up with a unique trade mark concept, this should not be significantly difficult to achieve. You can conduct a trade mark search to see what similar trade marks already exist. Additionally, you should complete appropriate research to determine what standard terms traders may use in your industry to refer to the relevant goods or services.

Achieving Distinctiveness Through Use

However, if your trade mark is not sufficiently inherently distinctive by its nature, you may be able to demonstrate its distinctiveness through appropriate use. This means that if you can prove that customers associate and recognise your trade mark with your business, protecting your goods and services, it may be distinctive. Your trade mark must have become distinctive through your use of it before your trade mark application for registration.

For instance, common surnames, industry terms, and the names of geographical places are inherently non-distinctive. However, if you can provide evidence that your trade mark using one of these elements has become distinctive through your use of it, then you may be able to register it.

How much evidence you need to provide will depend on your situation. The more common your surname or more descriptive your trade mark, the more convincing your evidence needs to be. There are specific requirements for what your evidence needs to include, but you could use details of:

  • the market share that your business under the trade mark holds;
  • examples of how you use your trade mark in New Zealand;
  • the amount you have invested into your trade mark;
  • supporting declarations from other traders in the industry; or
  • customer surveys measuring the distinctiveness of your trade mark.

Key Takeaways

Your registered trade mark needs to be distinctive enough to indicate your business as the origin of the goods or services you provide. What this means exactly will depend on your particular situation. However, generally, your trade mark should not solely be descriptive of your goods or services or only use common industry terms.

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

What is a trade mark?

A trade mark is a type of intellectual property that serves as a unique identifier for your business. Common examples include your business name or logo.

When is my trade mark distinctive?

Whether your registered trade mark is distinctive will depend on the nature of your trade mark and the industry you trade in. However, a distinctive trade mark is generally not solely descriptive and does not use standard industry descriptive terms.

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