3. Mandatory acceptance requirements

An application to register a trade mark must contain a business or residential address where this differs from the address for service, before it can be accepted.¹⁴ A “business or residential address” is defined in regulation 3 of the Regulations as a physical street address, whether in or outside New Zealand and does not include an electronic address, a post office box, or a document exchange box.

Footnote

¹⁴Regulation 44(a) of the Regulations

An application to register a trade mark must be for the registration of a trade mark in respect of particular goods and services within one or more classes. Therefore, an application to register a trade mark must specify the class of the Nice Classification in effect at the time of the application in which registration is sought, before it can be accepted.¹⁵

The Nice Classification comprises 45 classes. Of those 45 classes, classes 1 to 34 pertain to goods, while classes 35 to 45 pertain to services.

For more information on the classification of goods and services, see the Practice Guidelines on Classification and Specification.

Footnote

¹⁵Regulation 44(c) of the Regulations

Section 19(2) of the Act states that trade marks filed in black and white or in colour, where no colour limitation is stated, are not limited as to colour. Where an application for a series mark is filed, no colour limitation¹⁶ will be required by the Commissioner.

However, where an applicant chooses to limit the trade mark as to colour, the applicant will be required to supply a description acceptable to the Commissioner pursuant to regulation 44(h) of the Regulations.

Where the Commissioner considers the trade mark is sufficiently distinctive on its own, the wording of such a colour limitation will be standardised as in these examples:

The mark is limited to the colours red, blue and white, as shown in the representation attached to the application.

The second and third marks in the series are limited to the colours blue, red and green, as shown in the representation attached to the application.

Where colour adds to the distinctiveness of a trade mark, allowing a mark to be eligible for registration which would otherwise not be eligible under section 18 of the Act, or to overcome a citation under section 25 of the Act, the Commissioner will request that a colour limitation be entered using a widely known and readily available colour standard such as the colour indexing scheme of the Pantone® colour system.

The wording of such a colour limitation will be standardised as in these examples:

The mark is limited to the colours red (Pantone ® 1234), blue (Pantone ® 5678) and white, as shown in the representation attached to the application.

The second and third marks in the series are limited to the colours blue (Pantone 123), red (Pantone 456) and green (Pantone 789), as shown in the representation attached to the application.

Where a mark limited as to colour contains black or white, but the limitation does not specify those colours, the Office will add these to the colour limitation.

Footnote

Section 5 of the Act defines a trade mark as:

… any sign capable of:

(i) being represented graphically; and

(ii) distinguishing the goods or services of 1 person from those of another person.

A “sign” is defined¹⁷as including a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket or word. “Sign” also includes “any combination of signs”. The definition of “sign” is an inclusive definition, therefore may include other “signs” that are not specifically listed.

In order to qualify as a trade mark, the following requirements must be met:

• The mark must be a sign; and
• The sign must be capable of being represented graphically; and
• The sign must be capable of distinguishing the goods or services of one person from those of another person.

As the definition of “sign” is inclusive, a very wide range of marks may qualify as a sign. However, a sign will not qualify for registration as a trade mark if it is incapable of being represented graphically and/or incapable of distinguishing the goods or services of one person from those of another.¹⁸

As well as containing a clear graphic representation of the mark in order to obtain a filing date,¹⁹ the mark must also be capable of being represented graphically before it can be accepted.

A description in words alone is not likely to be accepted as a graphical representation of a trade mark. However, there are circumstances where a description in words, if sufficiently precise, is acceptable.

Footnotes

An application to register a trade mark must contain a positive statement²¹ that the trade mark is in use in New Zealand or proposed to be used in New Zealand, before the application can be accepted.

Therefore, when submitting an application, whether through the IPONZ online facility or on paper, applicants will be asked to submit the following positive declaration:

The trade mark is proposed to be used or is being used by the Applicant or with their consent in relation to the goods and services stated.

The online application form will automatically default to the positive declaration but the applicant will have the option of either not agreeing to the declaration or submitting a blank declaration.

Where an applicant does not wish to agree online to the positive declaration or the declaration has not been included on the application form, the applicant will be asked by an Examiner to confirm that the mark is being used or is proposed to be used.

In accordance with regulation 44(j) of the Regulations, the mark will not be accepted until the Applicant makes the positive declaration.

Where the applicant agrees to the declaration, the Statement of Use field on the IPONZ database will affirm the declaration. All applications made under the Trade Marks Act 1953, and under the Trade Marks Act 2002 before this practice came into force will keep their current Statement of Use.

Footnote

Where research during the examination process indicates that the information provided by the applicant is not correct, the examiner will raise the issue with the applicant.

Applicants are required to advise the Office of the translation²² of any foreign words in a mark before it can be accepted.²³ The wording of a translation should be standardised as in these examples:

One foreign word

The applicant advises that the translation of the [language] word [word in capitals with no speech marks] in the mark is [translation in speech marks].

For example:

The applicant advises that the translation of the French word ROUGE in the mark is "red".

Several foreign words

The applicant advises that the translation of the [language] words [words in capitals with no speech marks] in the mark is (translation in speech marks).

For example:

The applicant advises that the translation of the French words POMME ROUGE in the mark is "red apple".

Where no translation is provided and research during the examination process indicates that the word(s) in a mark have no meaning in a foreign language, the examiner should proceed on the basis that the mark does not have meaning in a foreign language and the applicant will not be asked whether the mark is a foreign word.

However where no translation is provided and research during the examination process indicates that a word in a mark has a meaning in a foreign language, the examiner should proceed as follows:

• Where a mark has a meaning in a foreign language but that meaning is not one that would lead the examiner to raise a concern on absolute and/or relative grounds, the examiner should not ask the applicant for confirmation of the translation and will not require an explanation to be entered on the Register;
• Where a mark has a meaning in a foreign language that is likely to cause the examiner to raise a concern on absolute and/or relative grounds, the examiner should advise the applicant of the translation and request confirmation from the applicant of the translation.

Where research during the examination process indicates that the information provided by the applicant is not correct, the examiner will raise the issue with the applicant.

Footnotes

IPONZ will not accept territorial limitations²⁴ in the body of specifications of goods or services. Where an applicant wishes to limit the rights conferred by trade mark registration to a particular geographic region they may do so by requesting that a territorial limitation be entered. In accordance with section 40 of the Act, the form and wording of the limitation must be acceptable to the Commissioner.

The wording of the territorial limitation should reflect that the applicant has requested its entry. For example, the following wording would be acceptable in the situation where an applicant enters a contractual agreement and thereby agrees to only use their mark in the South Island of New Zealand:

The following limitation has been requested by the applicant: use of the mark is limited to the South Island

or

As a result of an agreement between the applicant and a third party, the applicant (or owner) has agreed to limit their rights in the trade mark to the South Island.

It must be borne in mind that territorial limitations will not overcome a distinctiveness objection under section 18 of the Trade Marks Act 2002 (“the Act”) nor will they overcome an objection under section 25 of the Act where the cited mark is not itself limited to a particular geographic region.

Footnote

Regulation 48 of the Regulations states:

1. The Commissioner may register a trade mark that includes the name or description of goods and services for those and other goods and services, if the name or description may vary in use
2. The Commissioner must require the applicant to undertake that the name or description will be varied if used for goods and services covered by the specification that are not the named or described goods and services
3. The undertaking must be entered on the register
4. If the applicant does not give an undertaking as required, the Commissioner may refuse to register the trade mark for goods and services that are not the named or described goods and services

Therefore, where an application to register a trade mark contains a specification of goods and services that is wider than those in the specification, the Commissioner must require a variation clause to be inserted.

For example, an applicant might apply to register the mark PALLISER’S BLACKCURRANT JELLY in respect of “jellies, jams and preserves”. The applicant will be asked to limit the specification of goods or services for their application to those goods or services named within the mark (in this example, blackcurrant jelly).

Alternatively the applicant may provide an undertaking that the mark will be varied if used for goods and services covered by the specification that are not the goods named within the mark. Using the example above, the applicant could provide an undertaking that the mark will be varied if used for varieties of jelly, jams or preserves other than blackcurrant jelly.

The applicant undertakes that in use in relation to foods other than blackcurrant jelly the mark will be varied by the substitution of the description of such food for the words "blackcurrant jelly".

Other examples include in class 32 for the class heading:

The applicant undertakes that in use in relation to beverages other than beer the mark will be varied by the substitution of the description of such beverages for the words "lager beer".

Where there is a blank space within a mark, the applicant may request the entry of a blank space condition²⁵ clarifying how the mark will be used in trade. However, entry of a blank space condition on the register will not necessarily overcome an objection to registration on absolute or relative grounds.²⁶

Tookey Q.C. set out three main reasons for blank space conditions in Re TIME Trade Mark [1961] RPC 381 at 385, which can be summarised as follows:

1. The Commissioner must know what is being registered.
2. The registered proprietor of a mark should not be able to represent as being a registered trade mark, a mark that contains matter which the Commissioner has had no opportunity of considering in accordance with the requirements of the Act.
3. Regard must be had to the extent that matter added to a blank space in the representation of a trade mark may affect the identity and therefore the distinctiveness of the mark sought to be registered.

Footnotes