2.4 Geographical names

A trade mark indicating a geographical name will not necessarily trigger a concern under section 17(1)(a) of the Act. The presumption is that the applicant will only use the mark on goods or services that have the connection with that geographical name or else the applicant will fall foul of other labeling legislation such as the Fair Trading Act 1986.

However, where the examiner is faced with information demonstrating that the geographical reference is clearly inaccurate, such that consumers might believe that the goods or services originate from that geographical place, and where it is clear that the goods or services in respect of which the application has been made do not actually originate from that geographical place, examiners should raise a concern under section 17(1)(a) of the Act.

A trade mark that includes the words “Product of New Zealand” on a mark to be used in relation to shoes would not be cause for a concern under section 17(1)(a) of the Act at examination stage unless the specification referred to “shoes from Italy” or evidence of use was filed showing that the shoes were manufactured or produced in a country other than New Zealand. For example: