Abstract:
Distinctiveness is a longstanding essential precondition for the registration of a sign as a trade mark. The Trade Marks Act 2002 (2002 Act) rewrote New Zealand’s trade mark law, and in so doing, established a new framework for assessing distinctiveness. One of the aims of this rewrite was to simplify the procedures for registering trade marks. However, the 2002 Act’s statutory framework governing distinctiveness has not proved simple to interpret. For a sign to be considered a trade mark in the first place it must be “capable of distinguishing”, under s 5. A sign that is not capable of distinguishing can be refused registration under s 18(1)(a). Section 18(1)(b) then states a trade mark must not be registered if it “has no distinctive character”. The overlap between the expressions “capable of distinguishing”, and “distinctive character” has proved to be a messy knot for adjudicators to grapple with. This article examines the knot under s 18, how it has been interpreted by the courts, and suggests some ways in which it could be unravelled. The task of unravelling the distinctiveness knot is important, not just for a proper understanding of how the statutory provisions governing distinctiveness work, but also for discerning an appropriate approach to determining the registrability of certain types of trade mark applications, such as those for descriptive, laudatory and non-traditional signs.
