Trade marks: The registration of surnames in New Zealand

Common surnames insufficiently distinctive to be registered as trade marks? We consider what the New Zealand practice is likely to be in light of the UK decision in Nicholls v Registrar of Trade Marks.

The definition of "sign" in section 5 of the Trade Marks Act 2002 (Act) includes "a brand, colour, device, heading, label, letter, name, numeral, shape, signature, smell, sound, taste, ticket, or word."

Given that "name" is included in the definition of "sign" in the Act, surnames are potentially registrable as trade marks.

Yet it is common practice for the Intellectual Property Office of New Zealand (IPONZ) to object to registration of a surname as a trade mark on the basis that the name is a common surname in New Zealand. The rationale is that a mark which is a common surname in New Zealand is insufficiently distinctive for registration.

However, IPONZ may follow a recent European Court of Justice decision on the registrability of surnames. If this decision is followed, IPONZ may change its policy on the level of distinctive character required for surnames to be registrable as trade marks in New Zealand.

Common surnames prima facie not registrable in New Zealand

Under section 18(1)(b) of the Act, a trade mark that has no distinctive character is not registrable. Where IPONZ considers a surname is common, it will object to registration on the basis that the surname has no distinctive character.

IPONZ currently assesses how common a surname is in New Zealand by checking the number of occurrences of that surname in the New Zealand Electoral Roll.

A surname which has no other meaning will be prima facie not registrable if it occurs over 40 times in the New Zealand Electoral Roll. A surname which has a better known meaning (e.g. "Baker", "Brown" or "Young") will be prima facie not registrable if it occurs over 120 times in the New Zealand Electoral Roll.

European Court of Justice says criteria for registering surnames should be no different to criteria for other marks

In a recent case Nichols plc v Registrar of Trade Marks (16 September 2004, Case C-404/02), the High Court of England and Wales sought clarification from the European Court of Justice on the distinctiveness of surnames as trade marks.

The European Court of Justice held that the criteria for assessing the distinctive character of a trade mark consisting of a surname should be no different from that applicable to any other category of mark.

Therefore, a stricter general criteria of assessment such as whether there is a predetermined number of people with the same name, above which that name may be regarded as devoid of distinctive character, cannot be applied to surname trade marks.

Will IPONZ change its policy on registering surnames?

If IPONZ follows the European Court of Justice decision in the Nichols case, surnames will not be refused registration solely on the basis that the surname appears a certain number of times on the New Zealand Electoral Roll.

As with other categories of marks, it would consider whether the surname is capable of distinguishing the goods or services of one trader from the same or similar goods or services provided by other traders, irrespective of how many times the surname appears on the New Zealand Electoral Roll.

Enquiries and information

For more information on trade marks, please email or call Garry Williams on 64 9 916 8661.