Friday, December 8 2023   \  Published by Henry Hughes .

Acquired distinctiveness and other circumstances in support of registration of a trade mark

Acquired distinctiveness and other circumstances in support of registration of a trade mark

Acquired distinctiveness and other circumstances in support of registration of a trade mark

To be eligible for registration in New Zealand, a trade mark must be distinctive and not descriptive of the goods and services for which registration is sought. However, the Trade Marks Act 2002 provides an important exception to the prohibition on registration of trade marks which are not inherently distinctive. Section 18(2) provides that Commissioner must not refuse to register a trade mark if, before the date of application for registration, the trade mark has acquired a distinctive character. The section further provides that the distinctive character may be acquired either through the use of the trade mark, or as a result “of any other circumstances”.

The acquisition of distinctive character as a result of any other circumstances was considered by the Commissioner1 following the issue of a Notice of Intention to Reject and application for registration of the trade mark AOTEAROA MUSIC AWARDS. In accepting the trade mark for registration on the basis of the other circumstances exception in section 18(2), the Commissioner has accepted that in the trade mark context, a te Reo Māori word (Aotearoa) is the same thing as the English language word equivalent (New Zealand).

In New Zealand, 2022 marked the 50th anniversary of the presentation of the Māori language petition / Te Petihana Reo Māori, to Parliament. The petition asked for active recognition of te reo Māori in New Zealand, and for the language to be taught in schools. This important moment is often seen as the starting point for a significant revitalisation and national recognition of te reo Māori in New Zealand. Te reo Māori is now recognised in law as an official language of New Zealand, following Te Pire Mo Te Reo Maori 1986, (the Maori Language Bill 1986), which came into force on 1 August 1987.Read more

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