Trade Marks Act 2002

Registrability of trade marks - Relative grounds for not registering trade mark - Registrability of identical or similar trade marks

25: Registrability of identical or similar trade mark

You could also call this:

"When can't you register a trade mark that's the same as or similar to another one?"

The Commissioner can't register a trade mark (trade mark A) for any goods or services if:

You already have a trade mark (trade mark B) that's exactly the same and is registered or has priority for the same goods or services, or for similar goods and services where it might confuse people.

You already have a trade mark (trade mark C) that's similar and is registered or has priority for the same or similar goods or services, and using trade mark A might confuse people.

Trade mark A is the same as, similar to, or a translation of a well-known trade mark in New Zealand (trade mark D). This applies even if trade mark D is for different goods or services, as long as using trade mark A would make people think there's a connection between the goods or services and the owner of trade mark D, and it could harm the owner's interests.

There's an exception to these rules in Section 26.

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This page was last updated on 13 May 2025

View the original legislation for this page at https://legislation.govt.nz/act/public/1986/0120/latest/link.aspx?id=DLM164474.

Topics:

Business > Intellectual property

24: Registrability of trade mark that contains representations of Royal Family, or

"Rules for trade marks with pictures of the Queen or Royal Family"

26: Exceptions, or

"When you can register a trade mark even if it's like another one"

Part 2Registrability of trade marks
Relative grounds for not registering trade mark: Registrability of identical or similar trade marks

25Registrability of identical or similar trade mark

The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if—
it is identical to a trade mark (trade mark B) belonging to a different owner and that is registered, or has priority under section 34 or section 36,—
1. in respect of the same goods or services; or
2. in respect of goods or services that are similar to those goods and services, and its use is likely to deceive or confuse; or
it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority under section 34 or section 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or
it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (trade mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of trade mark A would be taken as indicating a connection in the course of trade between those other goods or services and the owner of trade mark D, and would be likely to prejudice the interests of the owner.

Section 26 overrides subsection (1).

Notes

Section 25(1)(a): replaced, on 15 December 2005, by section 5(1) of the Trade Marks Amendment Act 2005 (2005 No 116).
Section 25(1)(b): amended, on 15 December 2005, by section 5(2) of the Trade Marks Amendment Act 2005 (2005 No 116).