Absolute Grounds for Refusal
There are strict rules in New Zealand specifying what you are not allowed to trademark. These “absolute” rules are found in section 17 of the Trade Marks Act 2002. We have summarised these below:
A trade mark which would be likely to deceive or cause confusion
You cannot register a trade mark which would be likely to deceive or cause confusion within New Zealand for the specified goods or services. A trade mark cannot mislead, cause confusion or perplex the purchasing public. You cannot trade mark a name that is the same or similar to an International Non-Proprietery name (INN) developed by the World Health Organisation (WHO). You cannot trade mark a name that is the same or similar to a generic name of a pesticide or agrochemical as advised by the International Standards Organisation (ISO)
A trade mark which is contrary to New Zealand law
You cannot trade mark a name or emblem that is prohibited by another piece of legislation For example the Geneva Conventions Act disallows the use of the red cross or red crescent symbols unless specifically allowed by the Minister of Defence.
Emblems such as the New Zealand police crest & badge, the Royal Standard , crown or coat of arms, state emblems or words that would suggest royal or government approval, certain commercial words and names used by government departments such as MAF are disallowed. The list of items that are not allowed to be trade marked is constantly changing as different legislation is created and major events are planned which can often have regulated names.
Offensive trade marks
You are not able to trade mark anything which in the opinion of the Commissioner of Trade Marks would be likely to offend a significant section of the community, including Maori. A mark should be considered “likely to offend a significant section of the community” where: The mark is likely to cause a significant section of the community to be outraged; and/or a significant section of the community is likely to feel that the use or registration of the mark should be the subject of censure.
A trade mark application made in “bad faith”
This may apply where someone tries to register a trade mark which they do not have ownership of or an intention to use the mark.
Relative Grounds for Refusal
There are also many relative grounds where the Commissioner of Trade marks may register a trademark by using discretionary powers These are found in Subpart 3 of the Trade Marks Act 2002.
Prescribed words and abrieviations
The Commissioner may register a trade mark that contains the words “copyright”, “layout design”, “patent”, “patented”, “plant variety right”, “registered”, “registered design”, or “trade mark”, or any abbreviation of those words, or any similar words.
Trade marks that contain a persons name
You may be required to get written consent before the Commissioner will grant a trade mark for a persons name.
Trade marks containing representations of the Royal Family
To grant a trade mark which contains a representation of a member of the royal family, written consent will need to be granted by that member first.
An identical or similar trade mark
You cannot register a trade mark which is identical or similar to another registered trade mark or a well known (Famous) trade mark. For a famous trade mark you cannot register it even if you only take a portion of the existing trade mark if it would prejudice the interests of the owner. There are a few exceptions to this, contact us if you require assistance to overcome an objection like this that a trade mark examiner may have raised.
A trade mark which contains a flag or state emblem
If you want to register a trade mark which contains a flag or state emblem you may be required to obtain written consent.
Emblems, Flags and Armorial bearings of certain international organisations
You are unable to register a trade mark using emblems, flags or armorial bearings of certain international organisations which are protected under the Paris agreement or the TRIPS agreement.
Should you need advice regarding what you can trade mark in New Zealand please contact us.
