There is no divergence between Australia and New Zealand in the definition of a trademark: both agree that any sign is a trademark if it indicates the trade source.

However, material divergence exists in each country’s way of assessing a mark with prima facie distinctiveness in practice – whether a mark has distinctive character in New Zealand and does not qualify as inherently adapted of distinguishing in Australia. This divergence is due to different distinctiveness tests. The court of Australia considers original significance of a mark among any persons, which is different from the practice in New Zealand.

Significant divergence also exists in regard to non-inherently distinctive marks. Such marks need to acquire distinctiveness through use for registration. The divergence is realized as the presumption of registrability. It is unclear how to measure the extent of NSIA marks and NTAEIA marks in Australia, whilst New Zealand adopts a more straightforward approach.

Furthermore, the evidence requirement for acquired distinctiveness to support NSIA and NTAEIA marks is different. New Zealand adopts a single test for marks that lack distinctiveness. The owner must prove the mark acquired distinctiveness before the filing date to overcome an s 18(1)(b) objection. Under Australian practice, the threshold for an NSIA mark is lower than for an NTAEIA mark. For an NSIA mark, it is possible to overcome the objection by showing that the mark will acquire distinctiveness, and post-filing date evidence is sufficient. This is unfair to NTAEIA marks, as the owner of an NSIA mark can overcome invalidation without factually acquired distinctiveness.

Overall, New Zealand’s decision-makers focus more on consumers when assessing distinctiveness, whilst the Australian approach focuses on traders by applying a presumption of registrability and balance of probability. The NSIA mark had more privileges in registration and invalidation than NTAEIA marks. Hopefully, a more certain approach will be adopted for assessing distinctiveness in the future.