A closer look at New Zealand’s distinctiveness standard for stylised trademarks

In New Zealand, a trademark must not be registered if it has no distinctive character under section 18(1)(b) of the Trade Marks 2002 (the Act). The leading test for distinctiveness in New Zealand is set out in W&G du Cros Ltd’s Application and was summarised in AA Insurance Ltd v IAG New Zealand Ltd as:

1. Whether the trademark can, on its face, distinguish a trader’s product from its competitor’s product; and

2. Whether other traders are likely, in good faith, to want to use the same or a similar mark in relation to their own products.

In Waterwipes Unlimited Co v Church & Dwight Co Inc (2021), the WaterWipes trademark was opposed on the grounds that it was not sufficiently distinctive to qualify for registration as a trademark in relation to tissues and wipes. The opponent argued that the trademark could not act as an indication of origin for the products covered in the application and that other traders were likely to want to use the same or similar mark in relation to their own products.

The Intellectual Property Office of New Zealand (IPONZ) upheld the opposition, finding that the stylised WaterWipes trademark did not have the sufficient distinctiveness to qualify for registration in relation to tissues and wipes, and that the stylisation of the trademark added little to its overall distinctiveness.

This outcome was surprising. In the past few years, the examination standard at IPONZ has been such that the presence of even minor stylised elements in a trademark (such as the water droplet in the WaterWipes trademark) means that a trademark is sufficiently distinctive enough to qualify for registration.

However, a case law review indicates that Waterwipes v Church & Dwight has not changed the examination standard for stylised trademarks. Instead, it appears that although trademarks containing minor stylisation are usually regarded as sufficiently distinctive at the examination stage to qualify for registration, such trademarks are generally more vulnerable to challenge on the grounds of non-distinctiveness during the opposition stage.

In Pinnacle Liquor Group Pty Ltd v New Zealand Winegrowers (2014), the trademark was successfully opposed on the grounds that it was not sufficiently distinctive to qualify for registration as a trademark in relation to alcoholic beverages.

According to the Commissioner, the mountain and cloud device in the trademark would either be perceived as a picture unconnected with the words ‘South Island’ (and would therefore not act as a badge of origin), or would be seen as a pictorial message intended to reinforce the South Island origin of the product. The trademark was therefore not regarded as sufficiently distinctive to qualify for registration.

Henry Soo Lee v UMF Honey Association Inc (2013), the above were successfully opposed on the basis that the words in the trademarks were descriptive and the stylisation of the trademarks were not sufficient to grant them sufficient distinctiveness to qualify for registration.  

In Essam Yousef v Pepscanz Ltd (2013), the Commissioner held that the ‘Pure’ trademark was not sufficiently distinctive to function as a trademark for tissue paper. The Commissioner reasoned that, as the trademark could appear in any colour and size, the stylised details would become less visible when the trademark was small. Consequently, it was held that the stylisation of the trademark did not grant it sufficient distinctiveness to qualify for registration. 

In Lake Brunner Resort Limited v Lake Brunner Lodge (2005) Limited (2008), the Commissioner held that the trademark was not sufficiently distinctive to qualify for registration in relation to accommodation services, as the text in the trademark was descriptive and the stylised elements were not sufficiently unique for the trademark to qualify for registration on distinctiveness grounds. 

There is no indication that Waterwipes v Church & Dwight has changed the distinctiveness standard for stylised trademarks. Instead, the case confirms that the distinctiveness standard for stylised trademarks during opposition is stricter than the standard for the same trademarks during examination.

Therefore, trademark attorneys should be aware that although trademarks containing minor stylisation are usually regarded as sufficiently distinctive at the examination stage to qualify for registration, such trademarks may be vulnerable to opposition on the grounds of non-distinctiveness.

 

Kieran O'Connell

Principal, AJ Park

E: kieran.oconnell@ajpark.com

Kathleen Henning

Trademark executive, AJ Park

E: kathleen.henning@ajpark.com