Trade mark practice guideline amendment 2006/13 – translations

Published: 05.12.2006

Marks that comprise 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 that 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 has amended two Practice Guidelines.

Examination of Trade Mark Applications – Clause 3.7 Translations
Absolute Grounds: Distinctiveness – Clause 6.3 Foreign Words

A full version of the new practice guideline is available at www.iponz.govt.nz select “Information Library” | “02. Trade Marks” | “3 Trade Mark Practice Guidelines” | “Trade Marks Act 2002”.