Trade Marks Act 2002

Registrability of trade marks - Absolute grounds for not registering trade mark - Registrability of non-distinctive trade marks

18: Non-distinctive trade mark not registrable

You could also call this:

"You can't register a name or sign as a trade mark if it doesn't stand out"

You can't register a trade mark if it's not distinctive. The person in charge of registering trade marks (called the Commissioner) has some rules they must follow. They can't register something that isn't actually a trade mark. They also can't register a trade mark that doesn't stand out or is too common.

The Commissioner won't register a trade mark if it only uses signs or words that just describe the product or service. For example, if it only tells you what kind of thing it is, how good it is, how much of it there is, what it's for, how much it costs, where it comes from, or when it was made. They also won't register a trade mark if it only uses words or signs that everyone already uses when they talk about that kind of product or service.

But there's an exception. Even if a trade mark seems too common or not distinctive enough, the Commissioner might still register it. This can happen if, before someone applied to register it, the trade mark became distinctive because of how it was used or for other reasons.

This text is automatically generated. It might be out of date or be missing some parts. Find out more about how we do this.

This page was last updated on

View the original legislation for this page at https://legislation.govt.nz/act/public/1986/0120/latest/link.aspx?id=DLM164462.


Previous

17: Absolute grounds for not registering trade mark: general, or

"Reasons why a trade mark can't be registered"


Next

19: Relevance of colour to distinctive character of trade mark, or

"How colour affects whether a trade mark is unique"

Part 2Registrability of trade marks
Absolute grounds for not registering trade mark: Registrability of non-distinctive trade marks

18Non-distinctive trade mark not registrable

  1. The Commissioner must not register—

  2. a sign that is not a trade mark:
    1. a trade mark that has no distinctive character:
      1. a trade mark that consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services:
        1. a trade mark that consists only of signs or indications that have become customary in the current language or in the bona fide and established practices of trade.
          1. The Commissioner must not refuse to register a trade mark under subsection (1)(b), (c), or (d) if, before the date of application for registration, as a result of either the use made of it or of any other circumstances, the trade mark has acquired a distinctive character.

          Notes
          • Section 18(1)(c): amended, on , by section 4 of the Trade Marks Amendment Act 2005 (2005 No 116).