Overcoming distinctiveness objection under Section 18

The objection typically states that your mark has “no distinctive character”, is descriptive of the kind, quality, or geographical origin of your goods or services, or consists of signs that are now generic or customary in your trade.

This is a serious legal barrier, but in almost all cases, it is not the end of the road. An objection is the start of a legal conversation, and it can be overcome with the right evidence and strategy.

Proving Acquired Distinctiveness

For marks that are descriptive or not inherently distinctive, the most effective and robust solution is found in Section 18(2) of the Act. This provision states that the Commissioner must not refuse a mark if, before the date of the application, it has “acquired a distinctive character” as a result of the use made of it.

In simple terms, this means that while your mark may have started as descriptive (e.g., “TREAT” for dessert sauce), your extensive use and promotion have educated the public to see it in a new way. It has “gained a new significance”. When consumers see that mark, they no longer think of the descriptive word; they identify the product as originating from your specific company.

The Burden of Proof

The law is clear, i.e. the burden of proof is on the applicant to satisfy the Commissioner that this change in public perception has occurred. This is where our firm’s expertise becomes your critical advantage.

The amount of evidence required is a matter of degree. The more descriptive your mark is, the greater the volume and quality of evidence needed to prove it has acquired a distinctive character.

That said, “use does not equal distinctiveness”. An examiner will not be convinced simply because you have used the mark a lot. No matter how much a company uses the word “SOAP” on soap, it will never become distinctive. Our job is to prove that your use has been in a distinctive sense, i.e. as a brand and that the public has come to recognize it as such.

The Form of Evidence

To overcome the objection, we cannot simply send an informal response. We must prepare and file formal evidence in the form of one or more statutory declarations.

Our team works with you to compile a comprehensive evidence package, which must all relate to the period before your application’s filing date. This package will include-

• A detailed statutory declaration from a director of your company.
• Exhibits showing how the mark has been used in New Zealand, such as packaging, brochures, website screenshots, and advertisements. (We will manage these exhibits, ensuring only clear copies and photographs are submitted, as IPONZ does not accept physical or perishable items ).
• Supporting declarations from independent, relevant figures in your industry attesting to the mark’s reputation.
• Commissioned survey evidence, if necessary, to demonstrate public recognition.

The Substance of Evidence

Our declarations are structured to answer the specific questions the examiner needs to assess. Based on established case law, we build a case that addresses these key factors-

• Market Share: How much of the New Zealand market does your brand hold?
• Intensity, Geography, and Duration of Use: We must demonstrate how long, how intensively, and how widespread (geographically across New Zealand) your use has been. We will ask for the date of first use and details on its continuity.
• Promotional Investment: How much has your company invested in promoting the mark in New Zealand? We will request annual figures for advertising and promotional expenses.
• Sales and Turnover: What are the annual sales/turnover figures for the goods or services sold under this mark in New Zealand?
• Public Recognition: This is the ultimate test. We must show that a “significant proportion” of the New Zealand public now identifies goods bearing that mark as coming from your company because of the mark.

We also provide critical guidance on navigating “use” pitfalls. For instance, if your mark is always used next to a more dominant, registered brand, it is harder to prove the secondary mark is doing any work as a badge of origin. We will work with you to find evidence of the mark being used on its own.

Alternative Strategies to Secure Your Registration

While filing evidence of use is the most common strategy, it is not the only one. Our firm will analyze your entire commercial position to see if a more efficient path is available.

“Other Circumstances” and Prior Rights

Section 18(2) also allows a mark to be registered if it acquired distinctiveness through “any other circumstances”. This includes non-traditional trade mark use, such as its use as a company name.

Most powerfully, this allows us to leverage your existing intellectual property portfolio. If you have an older, established New Zealand registration for the same or a very similar mark, we can use this “prior right” to overcome the objection on the new application.

This can apply in several ways:

• Same Mark, Same Goods: If you have an existing registration for the mark (or a key part of it) for the same goods, we can rely on that earlier right.
• Minor Variation: If your new mark is just a minor variation of an existing registered mark (e.g., a “series mark”), we can argue for its acceptance based on the registration you already hold for the same goods.
• Similar Goods: In some cases, we can even overcome an objection by relying on an existing registration for similar goods. If you have an earlier registration (that was itself based on evidence of use) for goods that are “fairly closely allied” to the new goods, we can make a legal argument that the distinctiveness from the first registration “flows over” to the new application.

Strategic Specification Amendments

Sometimes the path of least resistance is the most effective. Rather than engaging in a costly evidence dispute, we can negotiate a solution with the examiner by strategically restricting your specification of goods and services.

• Deletion: If the mark is only descriptive for some of your goods (e.g., “WOOL” for “yarn” but not for “software”), we can simply delete the “offending goods” from the specification. This secures the registration for the remaining items, which are not objectionable .
• Positive Limitation: We can overcome an objection by making a broad specification more precise. For example, if “COMPUTER SERVICES” is deemed too descriptive, we can amend it to “computer services namely custom software development for the retail industry“, a term that is far more specific and less descriptive .

The End of “Negative Limitations”

It is crucial to have expert, current advice when amending a specification. It was previously common practice to overcome a descriptive objection by adding a “negative exclusion.” For example, for the mark “PURPLE” on “chocolates,” an applicant could add the limitation “none of the aforesaid goods being colored purple”.

This practice is no longer acceptable in New Zealand. Following key court decisions, IPONZ will no longer accept exclusions based on the characteristics of a product. This is because such an exclusion is considered legally uncertain and still likely to deceive or confuse the public.

Exclusions can still be used, but they must be for categories or sub-categories of goods, not for their features, qualities, or purpose. Navigating this distinction is a complex legal task. Attempting to file a “negative limitation” incorrectly can lead to further objections and delays.

Work with us

A Section 18 objection is a complex legal challenge, but it is one that can almost always be addressed. It requires a strategic choice: do we fight on the law, do we compile a comprehensive case of evidence, or do we negotiate a commercially-astute amendment?

Our firm provides the expertise to analyze the objection, review your commercial history, and advise on the most effective and direct path to registration. Contact us to discuss your examination report and let us build the case for your brand.