1. Introduction

Subpart 2 of Part 2 of the Trade Marks Act 2002 (the Act) contains the absolute grounds for not registering a trade mark, and incorporates sections 17 to 21 of the Act. These Guidelines focus on the registrability of a trade mark under section 17 of the Act.

Under section 17(1)(a) the Commissioner must not register any matter as a trade mark, or part of a trade mark, where the use of that matter would be likely to deceive or cause confusion.

Section 17(1)(b) prohibits the registration of any matter as a trade mark, or part of a trade mark, if use of that matter would be contrary to New Zealand law or would otherwise be disentitled to protection in any New Zealand court.

Section 17(1)(c) prohibits the registration of any matter as a trade mark, or part of a trade mark, if the Commissioner considers that the use or registration of that matter would be likely to offend a significant section of the community, including Māori.

Section 17(2) prohibits the registration of a trade mark if the trade mark application is made in bad faith. This subsection of the Act is principally concerned with the question of whether the applicant is the rightful owner of the mark that has been applied for.

Section 17(3) is an exception to section 17(1)(b) of the Act. It permits the registration of a trade mark even if use of the trade mark is restricted or prohibited under the Smoke-free Environments Act 1990.