Can You Trade Mark Descriptive Words?

A trade mark is designed to enable businesses to distinguish their product or services from similar products or services offered by their competitors. A trade mark must be ‘distinctive’ in order to attract trade mark protection, which is why descriptive words or adjectives are very often denied registration.

However, in Australia recently, Lion Nathan stopped a rival brewery from registering the word “New” because Lion Nathan already had rights in that descriptive word. The Officer at the Hearing said one of the main reasons for denying the rival company rights in the word “New” was because of Lion Nathan’s extensive reputation for their “Tooheys New” beer which had, since 1931, been referred to as just “New”.

Although it is not certain whether this decision will have any impact in New Zealand, it is a timely reminder to all those who are looking at creating and/or registering their trade marks. Proper advice about the likelihood of registration of a trade mark, and guidance during the registration process will help reduce costs in the long run, as well as avoid the situation of having to ‘prove’ your trade mark had been in existence since 1931!

For more information about trade marks, please contact one of our intellectual property lawyers today.