Distinctiveness Requirements

Filing a trade mark application is the first crucial step in claiming ownership of your brand. But it is also the beginning of a complex legal examination. Before your mark is ever compared to your competitors’, it must first clear a series of fundamental hurdles known as the “absolute grounds” for refusal.

The most critical and complex of these is Section 18 of the Trade Marks Act 2002, i.e. the test for distinctiveness. This section essentially asks one question, i.e. is your chosen sign truly capable of acting as a “badge of origin”? Can it, on its own, distinguish your goods or services from those of all other traders?

The Burden of Proof

In New Zealand, there is a presumption that a trade mark is registrable unless one of the absolute or relative grounds in the Act applies. However, if an examiner at the Intellectual Property Office of New Zealand (IPONZ) raises a reasonable objection, for example, that your mark is descriptive, the onus shifts entirely to you, the applicant. You must then “satisfy” the Commissioner, on the balance of probabilities, that your mark is registrable and the objection should be waived.

It is important to understand that this is a sovereign assessment. The fact that your trade mark has been accepted in other countries, even in Australia or the United Kingdom, is not a guarantee of success in New Zealand. While IPONZ will consider such acceptances, it is not bound by them and will not register a mark it believes is unregistrable under New Zealand law. You cannot simply point to a similar mark that was registered by IPONZ in the past. Each application is judged on its own merits at the time of filing. The examination standards and the state of the market are constantly evolving.

This is why expert local representation is critical. Our firm’s advice is based on a deep understanding of current IPONZ examination practice and New Zealand case law, ensuring your application is built to withstand today’s scrutiny.

The Four Pillars of Refusal Under Section 18

Section 18 is broken down into four key objections, each designed to filter out signs that cannot or should not be monopolized.

• Section 18(1)(a)- This is the most fundamental objection. It means the sign you’ve applied for fails the legal definition of a trade mark by being either the sign cannot be recorded clearly on the register as a “fixed point of reference” or the sign is so generic or basic that it can never function as a badge of origin.

An objection under this section is often fatal. Unlike the other pillars, it cannot be overcome by providing evidence of use.

• Section 18(1)(b)- This is the broadest and most common “sweeping-up” provision. It is designed to catch any mark that is not inherently distinctive, even if it isn’t purely descriptive. The core test is: “Is it the sort of word… which cannot do the job of distinguishing without first educating the public that it is a trade mark?”. Common laudatory words (e.g., “TREAT”) or simple signs fall here.
• Section 18(1)(c)- This provision is the great gatekeeper of trade mark law. Its purpose is to prevent any single trader from monopolizing a word or sign that other honest traders may need to use to describe their own goods or services.

A mark will be refused if it consists only of signs that may serve in trade to designate the-

• Kind (JUMBO, PERSONAL for computers)
• Quality (SUPERIOR, BEST, PREMIUM)
• Quantity (200 for cigarettes)
• Intended Purpose (BATHROOM for cleaning products)
• Value (BARGAIN)
• Geographical Origin (see below)
• Time of Production (VINTAGE 1990 for wine)
• Other characteristics (WEDDINGS for a magazine)

The test is applied from the perspective of the “average consumer” for those specific goods, who is considered “reasonably well-informed and reasonably observant”.

• Section 18(1)(d)- This section overlaps with sub section (1)(c) but specifically targets signs that have become generic or customary in the established practices of a trade. These are signs that other traders actually use to the point they are no longer distinctive. Examples include the letter ‘L’ for driving schools, simple devices of grapes for wine, or star ratings for hotels.

The Geographical Origin

A key part of Section 18(1)(c) is the refusal of marks that designate a geographical origin. This is a major hurdle, as the law is clear that names of places must be kept free for all traders in that location to use.

Our firm performs a deep analysis of your mark against these geographical rules:

• Known Reputation: If a location is already renowned for the specified goods or services (e.g., “KARANGAHAPE ROAD” for entertainment services), an objection is almost certain.
• Well-Known Places: The names of well-known New Zealand cities, or major overseas cities, are unlikely to be registered for any goods, as the public is likely to perceive them as designating origin.
• Fanciful Use: An exception exists if the connection is “fanciful” and clearly not an indication of origin (e.g., “NORTH POLE” for bananas).
• Local Services: A mark comprising a suburb or street name for a local service (e.g., “GANGES ROAD PHARMACY”) is unlikely to be registrable.
• National Identity: The name “NEW ZEALAND” or a conventional depiction of a kiwi or a map of the country is considered a designation of geographic origin and is not registrable.

Assessing Specific Mark Types, i.e. Words, Logos, and Slogans

Distinctiveness is not a “one-size-fits-all” test. IPONZ applies specific standards to different types of marks.

• Surnames and Forenames: The old practice of objecting to a surname based on how many times it appears on the electoral roll is no longer used. The test is now whether the name is distinctive for the goods in question. A common surname like “SMITH” for “plumbing services” would be difficult to register, as it’s common for plumbers to trade under their own name. Adding initials (e.g., “J. SMITH”) will generally add the required distinctive character.
• Misspellings: An obvious misspelling of a descriptive word is treated as if it were spelled correctly. Marks like XTRA, PAK, or NITE are just as non-distinctive as EXTRA, PACK, or NIGHT.
• Māori and Foreign Words: Māori is an official language of New Zealand, and words in te reo Māori are treated the same as their English equivalents. If the English word is descriptive, the Māori word is also descriptive. For other foreign languages, the test is whether the “relevant class of persons in New Zealand” would understand its descriptive meaning. Specialists are held to a higher standard; a wine trader is expected to understand French terms like vin rouge.
• Logos (Devices): A device that is common to the trade (a vine leaf for wine) or a simple geometric shape is not distinctive. A mark must be “sufficiently unusual and fanciful” to be registrable on its own.
• Composite Marks (Words + Logo): A mark is assessed as a whole. However, a common mistake is assuming that combining a descriptive word (e.g., “PREMIUM”) with a simple logo (e.g., a circle) makes the entire mark distinctive. This is not true. An ordinary arrangement of non-distinctive elements is still non-distinctive.
• Slogans: This is a notoriously difficult category. Many slogans are viewed as promotional, not as badges of origin. Slogans that are simple value statements (“CARING FOR NEW ZEALAND”), common descriptive phrases (“GOOD FOOD MADE EASY”), or personal statements (“I [HEART] NZ” on a t-shirt) will be refused. A slogan must have a “perceptible difference” or be an allusive play on words (e.g., “WE’LL STEER YOU RIGHT” for car sales) to be accepted.

The Challenge of Unconventional Marks

The law allows for signs like colours, shapes, and sounds to be registered, but the distinctiveness threshold is extremely high.

• Colour: A single colour per se is considered to have “no distinctive character”. Even a combination of two or more colours is considered to have insufficient distinctiveness. Registration of a colour mark almost always requires extensive evidence of use. Furthermore, the application must be precise, using a colour standard like Pantone®. Vague descriptions like “the predominant colour” are not acceptable.
• Shape (3D Marks): This is a major area of refusal. A shape will be rejected if it is “functional.” This includes shapes that result from the nature of the goods themselves (e.g., the basic shape of a toothbrush), are necessary to achieve a technical result (e.g., the pointed end of a toothpick) and give “substantial value” to the goods (e.g., a purely decorative or novelty shape).
• Sounds and Smells: A sound mark that is too simple (e.g., two or three notes) or is naturally associated with the goods (a popping cork for champagne) is not distinctive. Likewise, a smell that is the natural scent of the product (a lemon scent for detergent) is not distinctive and cannot be registered.

Why work with us?

If your chosen mark falls into one of these non-distinctive categories, it does not necessarily mean it can never be registered. The Act provides a critical pathway forward in Section 18(2).

This provision states that a mark that would otherwise be refused under sections 18(1)(b), (c), or (d) can be registered if it can be shown that, before the date of application, the mark has “acquired a distinctive character” as a result of the use made of it.

This is where our firm’s services are most valuable. “Acquired distinctiveness” (or “distinctiveness by nurture”) means you have used the mark so extensively and exclusively that the New Zealand public no longer sees it as a descriptive word, but as your badge of origin.

We specialize in preparing and arguing these complex evidence-based cases. This involves gathering and presenting substantial proof, such as:

• Evidence of the mark’s market share and turnover.
• Marketing and advertising spend.
• Examples of the mark’s use across New Zealand.
• Public and trade recognition (e.g., surveys, declarations).

This is a high legal threshold to meet, but it is the primary way that “descriptive” brands, famous color marks, and unique product shapes achieve registration.

From initial analysis to complex arguments of acquired distinctiveness, our team has the expertise to guide your brand through every stage of the Section 18 examination. Contact us today for a free consultation.