The core function of a trademark is to indicate the origin of goods and services. Trademarks allow consumers to reduce their searching costs to identify goods and services provided by different traders.[1] Distinctiveness is an essential requirement for trademark registration. If a mark is devoid of distinctive character, that is a valid ground for opposing an application and invalidating a registration. Distinctiveness is also a core element when considering whether a sign’s use infringes on a trademark.

Australia and New Zealand have the same definition of trademark: it is an indicator of the trade source. However, in terms of what capable of distinguishing constitutes, meanings differ under s 5 and s 18 of New Zealand Trademarks Act (NZTMA) and s 41 of Australia Trademarks Act (AUTMA). Under the practice in Australia, the examiner considers the “presumption of registrability” when assessing distinctiveness. New Zealand has adopted a different approach. In New Zealand, the test is whether the mark has no distinctive character. The differences represent a significant divergence in distinctiveness approach.

Section II of this article identifies the similarities between how distinctiveness is assessed in Australia and New Zealand. Section III explains the differences. Section IV (the conclusion) discusses the divergence in assessing distinctiveness.

[1] W Landes and R Posner “Trademark Law: An Economic Perspective” (1987)30JL & Econ265, p275.