Trade marks : basic requirements for registrability in New Zealand

Abstract

The object of this thesis is to analyse the fundamental attributes which must be possessed by a trade mark (other than a certification trade mark) before it is registrable under the Trade Marks Act 1953. This analysis requires a detailed study of section 14 of the Act, which provides for the registration of trade marks which are adapted to distinguish, and section 15, which provides for the registration of trade marks which are capable of distinguishing For a discussion of the difference between “adapted to distinguish” and “capable of distinguish” see post at p. 174 ff. So that the scope of the thesis may be clearly defined the above outline may require some clarification. It will be noted on a perusal of the relevant provisions of the Act that following sections 14 and 15 there are a number of sections which prohibit the registration of certain marks See ss. 16 and 17 which prohibit the registration of deceptive marks and marks which are identical with or confusingly similar to marks already on the register or empower the Commissioner of Trade Marks to refuse certain marks either unconditionally See s.18 or unless certain conditions are satisfied. See ss. 19, 20, 21 and 23. These provisions will not be discussed except in so far as they may have relevance to the question as to whether a trade mark has the basic requisites for registrability set out in sections 14 and 15. Nor will questions relating to the Commissioner's residuary discretion to refuse or accept a mark as he may think right See s. 26(2) be discussed except in so far as they may have this relevance.