New Zealand's Absolute Grounds for Trade Mark Refusal

Filing a trade mark application is a critical first step in protecting your brand. However, before your application is even compared to other trade marks, it must first pass a series of challenging legal tests known as the “absolute grounds for refusal.” These are set out in Section 17 of New Zealand’s Trade Marks Act 2002.

These grounds are not about whether your mark is too similar to a competitor; they are about whether your mark, in and of itself, is legally fit for registration. The law places the burden of proof squarely on the applicant to show that the mark is compliant. An application can be refused outright if it is found to be deceptive, contrary to the law, offensive, or filed in bad faith.

Likely to Deceive or Cause Confusion

This is the most common absolute ground for refusal. This test is not about confusion with another brand, but about whether the mark itself contains matter that is likely to deceive the public about the nature, quality, or origin of the goods or services.

The examiners are not concerned with “hypothetical possibilities” but with “practical business probabilities”. They will assess whether a real likelihood of confusion exists for an ordinary consumer.

This objection can be triggered in several ways:

• Misdescribing Goods or Characteristics: A trade mark that includes descriptive words may be acceptable, as IPONZ will presume you will use the mark appropriately. For example, a mark like “TUATARA LITE” for “milk” is acceptable, as it’s presumed the milk will be ‘lite’. However, the objection will be raised if the specification contradicts the mark. If the application for “TUATARA LITE” was for “full fat milk,” it would be rejected as deceptive.
• False Geographical Origin: Similarly, a mark like “TUATARA NEW ZEALAND” for “clothing” is acceptable, as it’s presumed there is a connection to New Zealand. But if the specification stated “imported clothing,” the mark would be rejected as clearly inaccurate and deceptive.
• Implying False Endorsement: A mark that suggests sponsorship or endorsement from a famous person or organization can be deceptive. For example, an application for “SIR EDMUND HILLARY” for mountaineering equipment, filed by an unrelated company, would likely be rejected. This applies to well-known organizations as well, such as the “World Trade Organization”.
• Technical Generic Names: This is a critical technical trap. An application for a mark that is identical to a generic name for a substance will be rejected as deceptive if the goods are not limited to that substance. International Non-Proprietary Names (INNs) are the globally recognized generic names for pharmaceutical substances. An application for a known INN (e.g., Ibuprofen) for “pharmaceuticals” would be rejected. The same logic applies to official plant variety names protected under the Plant Variety Rights Act 1987. A mark for a known rose denomination, for example, cannot be registered for “plants” in general. It would be considered deceptive.

Our firm’s analysis identifies these deceptive elements, from false endorsements to highly technical INNs, and we provide the strategic advice needed to amend the specification or, in some cases, advise that the mark is unregistrable.

Contrary to New Zealand Law

This section prohibits the registration of any mark if its use would be “contrary to New Zealand law”. This is not a vague concept; it means the mark’s use would breach a specific Act of Parliament.

An applicant cannot be expected to know every specific New Zealand statute that protects a name or emblem. Our firm maintains and cross-references these protected lists as a key part of our due diligence.

Some of the most significant prohibitions come from the Geneva Conventions Act 1958 as this Act prohibits the use of emblems like the Red Cross, Red Crescent, Red Crystal, and the heraldic emblem of the Swiss Confederation.

The Flags, Emblems, and Names Protection Act 1981 is also a major barrier and one of the most complex. IPONZ is legally forbidden from registering marks that breach this Act. This Act prohibits the unauthorized use of any representation of the Royal Coat of Arms, Royal Crown, NZ Coat of Arms, or Seal of New Zealand that implies authority or patronage. Use of the word “Royal” is also prohibited unless the Governor-General’s consent is obtained. This is a significant undertaking.

The word “Government” and other words implying official patronage is also prohibited under this act. That said, “ANZAC” is prohibited from use “in connection with any trade or business” and a long list of names are protected, including “INTERPOL”, “UNESCO”, “DSIR”, “MAF”, the “28th Māori Battalion”, and the “Girl Guides Association”.

That said, the Racing Act 2003 prohibits names that suggest a connection to the “New Zealand Racing Board” or the “TAB” and the Major Events Management Act 2007 permanently protects words and emblems related to the Olympic and Commonwealth Games, such as the Five Ring Olympic Symbol, the “Olympic Flame Symbol”, and words like “Olympic Gold”.

Offensive Marks

The Commissioner must not register a mark if its use or registration would be “likely to offend a significant section of the community, including Māori”.

This is a high bar. The test is not whether some people might find the mark to be in poor taste. The standard is whether the mark would “justifiably cause outrage” or “significantly undermine current religious, family or social values”. This is judged objectively from the perspective of a “right-thinking member of the public”.

A unique and critical aspect of New Zealand law is the specific inclusion of Māori as a significant section of the community. IPONZ has a formal process to manage this. Any application that is, or appears to be, derived from a Māori sign (either a word or imagery) will be referred to the Māori advisory committee.

Our firm’s experience with this process is vital. We can often identify potentially sensitive terms or designs before filing, advising you on the risk of referral. If the committee advises the Commissioner that the mark is likely to offend Māori, IPONZ will issue an objection. We then manage the legal response to this objection on your behalf.

Applications Made in Bad Faith

The Commissioner must also refuse an application if it is “made in bad faith”. The Act does not define “bad faith,” but it is understood to relate to issues of ownership and an applicant’s true intention to use the mark.

This objection is rarely raised by an examiner, as it’s difficult to prove at the examination stage. It is more commonly used by third parties during opposition proceedings. However, IPONZ may raise it in “exceptional circumstances,” such as when an applicant with no apparent connection files for a mark that is famously owned by another entity.

Why is expert guidance essential?

The “Absolute Grounds” for refusal under Section 17 are a legal minefield. A perfectly good brand name can be rejected for reasons that have nothing to do with competitors, but instead because the mark itself contravenes one of New Zealand’s many specific statutes, is deemed deceptive, or is found to be offensive.

Our firm’s trade mark service is built on navigating these complex challenges. We do more than just file your application; we analyze it against all of these grounds, from checking plant variety databases to understanding the nuances of the Māori advisory committee. This proactive, expert review is the best way to ensure your application clears these first, and most absolute, hurdles.

Contact us today for a free consultation.