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Your business’s intellectual property constitutes valuable and unique ideas that bring you commercial benefit. You gain a benefit from your logo, for example, because customers recognise it and trust it in the marketplace. In particular, this recognition is a crucial part of your ability to register a trade mark. The Trade Mark Commissioner and the Intellectual Property Office of New Zealand (IPONZ) manage the registration process, and have specific grounds that relate to whether they can approve your application to register your trade mark. This article will provide some background on the matter and explain how absolute grounds and distinctiveness can affect your trade mark application.

How Do Trade Marks Work in NZ?

A trade mark is a kind of intellectual property right that protects the unique identifiers of your business. These identifiers link part of your business’ brand to the goods or services you provide, and can include:

  • words;
  • phrases;
  • symbols;
  • logos;
  • images;
  • colours; or
  • any combination of these.

To have registered trade mark rights, you need to apply to IPONZ, which has strict criteria for approving trade mark applications. If your trade mark application does not meet these criteria, they can refuse your application and not register your trade mark. 

As part of your trade mark application, you will need to:

  • determine the different elements of your trade mark;
  • specify which classes of goods or services your trade mark applies to;
  • conduct a trade mark search to ensure similar or identical trade marks do not already exist;
  • prepare appropriate documentation of your trade mark; 
  • pay appropriate fees; and
  • submit important information through IPONZ’s online application portal.

When Is a Trade Mark Registrable?

Your trade mark is registrable if:

  • your application meets the necessary legal requirements;
  • you have paid the necessary application fees; and
  • there are no absolute or relative grounds that would prevent your trade mark registration.

Absolute Grounds

Absolute grounds are specific criteria for your trade mark, serving as reasons for the Commissioner (as a part of IPONZ) to refuse your application. There are absolute grounds that are more general in nature and some that are more specific. Following this, in general, the Commissioner must not register your trade mark if, due to the inherent nature of your trade mark, its use:

  • would be likely to deceive or cause confusion;
  • goes against any New Zealand law or would not receive protection in court; or
  • registration would offend a significant section of the community, including Māori.

The Commissioner also cannot accept trade mark applications that the applicant has made in bad faith, such as if they are not the rightful owner of the trade mark itself.

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Relative Grounds

On top of these absolute grounds, there are relative grounds as well. These are reasons that the Commissioner may refuse a trade mark application because of trade marks that already exist. These grounds cover cases such as trade marks that:

  • contain certain words;
  • contain a person’s name;
  • are similar or identical to trade marks that already exist; or
  • contain specific flags.

Note the difference between these two concepts. Absolute grounds are inherent reasons that Commissioner cannot approve your trade mark. Relative grounds are your trade mark cannot be registered when considering existing trade marks. This article focuses on the absolute ground of the inherent distinctiveness of a trade mark itself. However, a relative ground might be that your trade mark is similar to an existing one.

Bear in mind that the Commissioner considers each case on its own merits, and the final decision remains up to them.

Absolute Grounds and Distinctiveness

The distinctiveness of your trade mark is an absolute ground that the Commissioner can use to refuse your trade mark application. In particular, if your trade mark does not qualify under their definition of distinctiveness, IPONZ cannot greenlight your application. Therefore, your trade mark must be capable of:

  • being represented graphically; and
  • distinguishing your goods and services from those of other businesses or people.

Accordingly, your trade mark must be distinctive. It cannot be too generic or ambiguous and must clearly distinguish your business’ goods or services. IPONZ will assess this based on the nature of those goods or services, and the ability of your customers to recognise your trade mark as being distinctive.

For instance, registering the word ‘eyeliner’ for your eyeliner products is unlikely to be successful, because this word is not distinctive and does not uniquely refer to your goods. Many other businesses use the term ‘eyeliner’ for their makeup products. As a result, a customer could not distinguish your goods from your competitor’s by reference to this term, so it is not capable of functioning as a trade mark.

Therefore, your trade marks cannot simply describe the goods or services you provide, or a general characteristic of them. Common descriptors in your industry need to be available for all traders to use when referring to their goods. So, if you attempt to register one of these terms as a trade mark, IPONZ can refuse your application.

How Do I Make Sure My Trade Mark is Distinctive?

The distinctiveness of your trade mark will depend on whether:

  • it can distinguish your product from a competitor’s product; and
  • other traders are likely to use an identical or similar trade mark in good faith when referring to their products.

Therefore, an effective trade mark search becomes crucial for this process. You should search to see whether a certain term or descriptor is widespread in the marketplace. To avoid denial on a relative ground, you should also search the marketplace to ensure nobody else is using your specific trade mark, or a similar trade mark. A trade mark specialist can help with this.

Key Takeaways

The Commissioner can only register your trade mark if it is sufficiently distinctive enough to distinguish your goods or services from your competitors. They have certain criteria for assessing distinctiveness, so it is crucial that you put in the effort to ensure your trade mark is unique.

If you need help with your trade mark’s distinctiveness, 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

How do I register a trade mark?

To register a trade mark, you need to apply through the Intellectual Property Office of New Zealand (IPONZ). This process will include defining your trade mark, determining your classes of goods or services, and paying the necessary application fees.

What is a trade mark search?

A trade mark search is an essential part of preparing to file your application. With it, you check to see what terms are registered, what trade marks already exist in the market, and whether they are identical or confusingly similar to the trade mark you wish to register.

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