Friday 21 May 2021

The distinctiveness standard for stylised trade marks in New Zealand

In New Zealand, a trade mark 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 [1] and was summarised in AA Insurance Ltd v IAG New Zealand Ltd [2]as:

(a) Whether the trade mark can, on its face, distinguish a trader’s product from its competitor’s product, and
(b) whether other traders are likely, in good faith, to want to use the same or a similar mark in relation to their own products.

Minor stylisation does not (in this case) grant a trade mark sufficient distinctiveness to qualify for registration

In Waterwipes Unlimited Co v Church & Dwight Co Inc [2021],[3] the WaterWipes trade mark was opposed on the grounds that it was not sufficiently distinctive to qualify for registration as a trade mark in relation to tissues and wipes. The opponent argued that the trade mark 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 trade mark did not have the sufficient distinctiveness to qualify for registration in relation to tissues and wipes, and that the stylisation of the trade mark 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 trade mark (such as the water droplet in the WATERWIPES trade mark) means that a trade mark 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 trade marks. Instead, it appears that although trade marks containing minor stylisation are usually regarded as sufficiently distinctive at the examination stage to qualify for registration, such trade marks are generally more vulnerable to challenge on the grounds of non-distinctiveness during the opposition stage.

Pinnacle Liquor Group Pty Ltd v New Zealand Winegrowers

In Pinnacle Liquor Group Pty Ltd v New Zealand Winegrowers [2014],[4] the trade mark was successfully opposed on the grounds that it was not sufficiently distinctive to qualify for registration as a trade mark in relation to alcoholic beverages.

According to the Commissioner, the mountain and cloud device in the trade markwould 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 trade mark was therefore not regarded as sufficiently distinctive to qualify for registration.

Henry Soo Lee v UMF Honey Association Inc

In Henry Soo Lee v UMF Honey Association Inc. [2013],[5] trade marks the above were successfully opposed on the basis that the words in the trade marks were descriptive and the stylisation of the trade marks were not sufficient to grant them sufficient distinctiveness to qualify for registration.

Essam Yousef v Pepscanz Ltd

In Essam Yousef v Pepscanz Ltd [2013],[6] the Commissioner held that trade mark 'Pure' was not sufficiently distinctive to function as a trade mark for tissue paper. The Commissioner reasoned that, as the trade mark could appear in any colour and size, the stylised details would become less visible when the trade mark was small. Consequently, it was held that the stylisation of the trade mark did not grant it sufficient distinctiveness to qualify for registration.

Lake Brunner Resort Limited v Lake Brunner Lodge (2005) Limited

In Lake Brunner Resort Limited v Lake Brunner Lodge (2005) Limited [7] [2008], the Commissioner held that the trade mark was not sufficiently distinctive to qualify for registration in relation to accommodation services, as the text in the trade mark was descriptive and the stylised elements were not sufficiently unique for the trade mark to qualify for registration on distinctiveness grounds.

Key takeaways

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

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

 This article was first published by Managing IPKathleen Henning is Managing IP’s international correspondent for New Zealand.

[1]W&G du Cros Ltd’s Application (1913) 30 RPC 660 (UKHL), at 671-672.
[2]AA Insurance Ltd v IAG New Zealand Ltd [2012] 1 NZLR 837, (2011) 95 IPR 633 at [22].
[3]WaterWipes Unlimited Company v Church & Dwight Co., Inc. [2021] NZIPOTM 2.
[4]Pinnacle Liquor Group Pty Ltd v New Zealand Winegrowers [2014] NZIPOTM 1.
[5]Henry Soo Lee v UMF Honey Association Inc. [2013] NZIPTOM 34.
[6]Essam Yousef v Pepscanz Ltd [2013] NZIPTOM 14.
[7]Lake Brunner Resort Limited v Lake Brunner Lodge (2005) Limited [2008] T32.