Proposed trade marks practice guideline amendment - translations

Published: 12.09.2006

Marks comprising foreign words may be prohibited from registration under sections 18(1)(b), 18(1)(c) or 18(1)(d) of the Act.

Clients have asked IPONZ to look at the translation requirements under the Trade Marks Act 2002 following the European Court of Justice’s (ECJ) judgement in case C-421/04, Matratzen Concord AG v Hukla Germany SA.

Following the ECJ’s judgement in Matratzen Concord AG v Hukla Germany SA, there are no grounds for refusing registration of trade marks in Europe on the basis they are relevantly descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. IPONZ has considered this case, other overseas decisions and the practice and policies of the Australian and United Kingdom Registries.

As a result, IPONZ proposes to amend the following two Practice Guidelines:

Examination of Trade Mark Applications
Absolute Grounds: Distinctiveness

A full version of this proposal is available at www.iponz.govt.nz select “Information Library” | “02 Trade Marks” | “4 Proposed Practices” | “7. September 2006”.

Comments on the proposed practices are invited and should be sent to Theo.Doucas@iponz.govt.nz by 28 September 2006.