Changes to New Zealand trade mark practice guidelines for letter and number marks, statements of us
The Intellectual Property Office of New Zealand (IPONZ) has proposed changes to New Zealand trade mark practice, as follows:
Letters and number trade marks
IPONZ proposes adopting a practice in relation to trade marks consisting of letters and/or numbers that adheres to the underlying presumption of registrability in the Trade Marks Act 2002 (NZ).
- Two-letter and three-letter trademarks are now likely to be registrable unless descriptive of a characteristic or quality of the goods or services, or a well-known abbreviation or acronym used in relation to the relevant goods or services.
- Single-letter marks will remain non-distinctive, unless presented in a sufficiently distinctive manner.
- Numbers may be acceptable for registration if capable of distinguishing one trader’s goods or services from those of others. However, numbers that designate characteristics of the goods or services concerned or are customary in the trade will lack distinctive character. The more random and unusual the number, the more likely that the sign will be considered sufficiently distinctive.
- Single-number marks will always be considered non-distinctive, unless they are sufficiently stylized.
- Two-digit numbers will normally be regarded as non-distinctive because they are commonly used in trade for non-trademark purposes. However, two-digit marks may be sufficiently distinctive for certain goods or services in relation to which numbers are not normally used – for example, 66 for financial services, 71 for soft drinks.
- Three-digit numbers, if random (e.g., 159, 347), may be regarded as sufficiently distinctive. However, round numbers such as 100, 120, 500 will generally be viewed as not having any distinctive character.
- Four-digit numbers will be considered as sufficiently distinctive unless they are round numbers that may be used in trade as model numbers or product codes.
- Letter-and-number combinations may be acceptable for registration depending upon how random and unusual the combination of letters and numbers is. Some combinations of one letter and one number may be sufficiently distinctive, depending upon the actual combination and the goods in relation to which registration is sought.
Account will always be taken of facts that are considered to be well known. For example, it is common knowledge that traders often make reference to the model of the goods by use of product codes on automotive parts, whiteware and electronic goods and components.
Statement of use
Regulation 44 of the New Zealand Trade Mark Regulations 2003 requires an applicant to provide a statement that the trademark is being used or is proposed to be used. Currently, IPONZ has interpreted this regulation as requiring the applicant to state either that the mark is being used or that the mark is proposed to be used. IPONZ considers that it is not necessary to draw a distinction between whether a mark is proposed to be used or is being used. As such, applicants will be required to provide a single declaration, as follows:
“The trade mark is proposed to be used or is being used by the applicant, or with his or her consent, in relation to the goods and/or services stated.”
This revised practice is more consistent with the current practice in Australia and the United Kingdom.
This proposal will come into force at a date to be confirmed by IPONZ.
This article is reprinted with permission from INTA Bulletin, Vol. 60 No. 18. Copyright © 2005 the International Trademark Association.