Trade Mark Registrability

Protectable Marks

Trade Marks should be distinctive and distinguishable from the trade marks or branding of others. Ideal trade marks are invented words with little or no bearing on the nature or type of your product or service. A trade mark that hints at the character or nature of your product (or service) is typically acceptable – something that clearly describes it is not registrable.

Trade marks may be words, logos, pictorial devices and graphics, combinations of words and graphics, and even sounds, smells and colours though these latter categories may be difficult to register and are not acceptable in all countries.

Not Protectable

To be registrable, a trade mark cannot describe the product or services it is to be used with. Neither can it describe the quality.

Neither can be it be offensive (and cultural considerations also come into play).
Common surnames cannot be used, for in the event that a person with that surname may wish to legitimately trade under their given name.

A similar restriction applies for geographical place names, including most NZ place names and well-known overseas place names.

Words having Maori cultural significance may be refused if considered inappropriate, and most Maori words will be reviewed as part of examination.
Generic and well known words associated with a particular type of product or service are not normally registrable. Similarly, a trade mark which becomes generic (e.g. the ‘common-English’ word for the product, rather than the brand of product) may end up being removed from the Trade Marks register.

To be registrable the mark cannot be confusingly similar or identical to an existing registration or prior application, which is in relation to similar goods or services, or where public confusion could result.

Marks which might be dangerous when applied, such as a trade mark suggesting an appetising foodstuff applied to a poisonous garden chemical, may be rejected.

Requirements:

An application for registering a trade mark may be filed at any time, though ideally before anyone else has established rights to it (or something confusingly similar) by filing an application or through use of the mark.