We examine all applications to register a trade mark to make sure they comply with all the requirements of the Trade Marks Act 2002 (the Act). As well as ensuring that an application meets the legal filing requirements, the Commissioner must be satisfied that there are no other grounds that would prevent registration of the trade mark.
This information is a general introduction to the examination step in the trade mark process. For more detailed information see Practice guideline 02a: Examination of trade mark applications.
Grounds of refusal
Your application may be refused on a number of grounds including:
These grounds concern the nature of the mark itself, and its ability to distinguish your goods or services from those of other traders. A mark may be rejected for a number of reasons, for example if it is:
- likely to mislead or confuse
- a superlative eg BEST, SUPER etc.
- a descriptive term eg SWEET for ice cream
- a geographical location associated with the goods or services eg BLUFF for oysters
- offensive to a significant section of the community, including Māori.
Note: If the trade mark is, or appears to be, derivative of a Māori sign, the application will be forwarded to the Māori Advisory Committee for advice.
See Practice guideline 16: Maori advisory committee and Maori trade marks for more information.
For more information about absolute grounds, see Practice guidelines 4 to 9.
These grounds are concerned with conflict between the trade mark application and the rights of other persons, entities or traders. A mark may be rejected on these grounds if:
- it is the same as another trader’s current application or registration for the same or similar goods or services, which was filed before your own;
- it is similar to another trader’s current application or registration for the same or similar goods or services, which was filed before your own; and use of your mark may result in confusion or deception with the earlier mark; and/or
- it is the same or similar to a well-known mark in New Zealand, and may indicate a connection in trade where one does not actually exist.
In the above instances, the other trader’s application or registration will have priority because it either:
- Was filed before your application; or
- Claimed convention priority based on a prior application that was filed before your application.
For more information about relative grounds, see Practice guidelines 7 to 11.
Respond to a compliance report
If we decide the mark is not registrable under the Act, we'll send you a compliance report that sets out the issues to be resolved.
If you disagree with any of the issues raised, or there are circumstances we’re unaware of that may help overcome any issue, we encourage you to respond with the reasons why the mark should be reconsidered.
If, following your submissions, we decide your mark is still not registrable under the Act, you may either abandon the application at no additional cost, or request a notice of rejection so that the matter may be considered by the Assistant Commissioner at a hearing.
For more information, see Respond to compliance report.