2.8 Generic names of pesticides or agrochemicals

The International Standards Organisation (ISO) advises New Zealand and other member states of the generic names for pesticides and agrochemicals. Notification is accompanied by a request that the name be recognised as the generic name for the particular substance.

A trade mark that is the same as, or confusingly similar to, a generic name for a pesticide or agrochemical in respect of those goods or similar goods, is likely to make consumers believe that the goods are, or contain, the pesticide or agrochemical that the generic name denotes. Similarly, a trade mark that is the same as or confusingly similar to a generic name for a pesticide or agrochemical, in respect of services related to pesticides or agrochemicals, is likely to make consumers believe that the services relate to the pesticide or agrochemical that the generic name denotes. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark is the same as, or confusingly similar to, a generic name for a pesticide or agrochemical; and
• The trade mark application is in respect of pesticides or agrochemicals, similar goods, and/or services related to pesticides or agrochemicals; and
• The trade mark specification is not limited to the pesticide or agrochemical that the generic name denotes, goods that contain the pesticide or agrochemical that the generic name denotes, and/or services related to the pesticide or agrochemical that the generic name denotes (as appropriate).

To overcome an examiner’s concern under this heading, the applicant may limit the specification to accord to the generic name for the pesticide or agrochemical. However, as the generic name for a pesticide or agrochemical serves to distinguish a particular pesticide or agrochemical from another pesticide or agrochemical, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.