Business Update

Trade mark practice guideline amendment 2006/09 – names of organisations

IPONZ has inserted the following clause into the Practice Guidelines on Absolute Grounds: Distinctiveness:

6.7 Names of Organisations

While each trade mark application is considered on its own merits and on a case by case basis, words which describe the nature of an organisation will generally not be prohibited from registration under section 18(1)(c) of the Act, unless the words may also serve in trade to designate characteristics of the goods or services.

For example, the mark THE NEW ZEALAND AUTOMOBILE ASSOCIATION describes an organisation, not the services provided by it. An objection would therefore not be raised under section 18(1)(c) of the Act. Conversely, the mark SEARCH AND RESCUE, for search and rescue services, could be both the name of an organisation and a description of the services provided.  These words would therefore be prima facie prohibited from registration by section 18(1)(c) of the Act.

Generally, the inclusion of words such as “institute”, “foundation”, “association” and “society” will mean the name describes the organisation rather than the goods or services provided. However, care should be taken with words such as “national” and “international” which could refer both to the organisation and the nature of particular goods and services.

Names of organisations eligible for registration under section 18(1)(c) of the Act are unlikely to be prohibited under section 18(1)(b) of the Act. However, caution should be exercised in relation to the names of those organisations which are unlikely to be able to distinguish one trader from others.

For example, the mark THE VEHICLE SERVICE FEDERATION NZ, in relation to vehicle repair services, is a sign which is able to signify the services of a single undertaking. This is because the word “federation” is not a word traders would normally use to describe the nature of their organisation. It is more likely they would describe their services as being provided by a “centre”. Therefore, given the practice of the trade, it is highly unlikely the relevant consumers would expect there would be more than a single “vehicle service federation” within New Zealand.

Conversely, the mark THE HIGHER EDUCATION SCHOOL is not a sign capable of distinguishing the educational services provided by one trader. Although this phrase is not a generic description for a category of educational establishment, the words “higher”, “education” and “school” are commonly used within the education industry and the ordinary person would be unlikely to expect there to be only one higher education school in New Zealand. The phrase does not therefore appear to be eligible for trade mark registration under section 18(1)(b) and (c) of the Act, as the combination is descriptive of higher education services provided by a school.

Similarly, the mark THE SPORTS ACADEMY is not capable of distinguishing the sports training services of one trader from those of another as it is possible for anyone in New Zealand to set up an ”academy” (as opposed to for example a ”university”). As a general rule, when the word ”academy” is combined with other descriptive or non-distinctive matter in a mark, the mark will be considered to be prima facie prohibited from registration as the mark describes both the organisation and the service being provided. The mark does not identify a single source of trade origin. It follows that such a sign should be kept free for other traders to use in their ordinary course of trade.
 
In some cases, it will be obvious a mark is not distinctive such as the mark TOURIST INFORMATION CENTRE because tourist information centres can be found in most large towns. However, there are no public policy grounds in the Act which require the Commissioner to keep names such as NATIONAL ASSOCIATION OF TOURIST INFORMATION CENTRES free to use in the future and this mark is prima facie eligible for registration.

Therefore, unless a name describes the goods or services or is self-evidently descriptive, names which are descriptive of the nature of the organisation should be accepted on a “first in-first served” basis. This is because the names of organisations are normally recognisable as signs which identify the source of the goods/services provided by those organisations.

6.7.1 Printed and electronic publications

Where an organisation is well known, there is sometimes a question about whether its name is distinctive for publications provided by it (as opposed to publications produced by others about it).

Where the organisation concerned is renowned for producing its own publications, there should be a presumption in favour of registration. The possibility that someone else may one day wish to publish a book about the organisation is not sufficient to refuse registration. Alternatively, if there is evidence that there are already numerous publications about the organisation produced by third parties, then the name should not be accepted as a trade mark for publications. In these circumstances, objections should be raised under section 18(1)(b), (c) and (d) of the Act.

Similarly, if because of the nature or history of the organisation concerned, its name solely or substantially designates the subject matter rather than trade origin (e.g. TERRITORIAL ARMY or NEW ZEALAND RAILWAYS), objections under section 18(1)(b) and (c) of the Act will arise if the application covers publications.