• Latest News & Articles

Acquired distinctiveness and other circumstances in support of registration of a trade mark

To be eligible for registration in New Zealand, a trade mark must be distinctive and not descriptive of the goods and services for which registration is sought. However, the Trade Marks Act 2002 provides an important exception to the prohibition on registration of trade marks which are not inherently distinctive. Section 18(2) provides that Commissioner must not refuse to register a trade mark if, before the date of application for registration, the trade mark has acquired a distinctive character. The section further provides that the distinctive character may be acquired either through the use of the trade mark, or as a result “of any other circumstances”.

The acquisition of distinctive character as a result of any other circumstances was considered by the Commissioner¹ following the issue of a Notice of Intention to Reject and application for registration of the trade mark AOTEAROA MUSIC AWARDS. In accepting the trade mark for registration on the basis of the other circumstances exception in section 18(2), the Commissioner has accepted that in the trade mark context, a te Reo Māori word (Aotearoa) is the same thing as the English language word equivalent (New Zealand). 

In New Zealand, 2022 marked the 50^th anniversary of the presentation of the Māori language petition / Te Petihana Reo Māori, to Parliament. The petition asked for active recognition of te reo Māori in New Zealand, and for the language to be taught in schools. This important moment is often seen as the starting point for a significant revitalisation and national recognition of te reo Māori in New Zealand.  Te reo Māori is now recognised in law as an official language of New Zealand, following Te Pire Mo Te Reo Maori 1986, (the Maori Language Bill 1986), which came into force on 1 August 1987.²

Over recent years the use of te Reo Māori in New Zealand has increased significantly in media, music and everyday life. As a reflection of this the NEW ZEALAND MUSIC AWARDS, which have been run under that name since 1965, were renamed AOTEAROA MUSIC AWARDS in 2020. Recorded Music New Zealand Limited filed an application to register AOTEAROA MUSIC AWARDS as a trade mark on 31 July 2020.

IPONZ objected to registration of the trade mark on the ground that the trade mark was not inherently distinctive for the goods and services of the application. Recorded Music faced a similar objection to their 2014 application NEW ZEALAND MUSIC AWARDS. That objection was overcome following the filing of evidence supporting a finding of acquired distinctiveness as a result of the long use of the NEW ZEALAND MUSIC AWARDS trade mark.

In response to the application to register AOTEAROA MUSIC AWARDS, Recorded Music relied on its prior rights in its earlier NEW ZEALAND MUSIC AWARDS, which IPONZ had accepted on the basis of acquired distinctiveness, to overcome the examiner’s objection that the trade mark was not distinctive.

IPONZ did not accept this line of argument and issued a Notice of Intention to Reject the application on the basis that the two trade marks were visually and phonetically different and convey different meanings. IPONZ considered that the evidence filed in support of the NEW ZELAND MUSIC AWARDS trade mark demonstrated acquired distinctiveness of that trade mark, not AOTEAROA MUSIC AWARDS. 

Recorded Music sought a hearing on the Commissioner’s proposal to reject the mark. In support of the registration of the application, Recorded Music filed the evidence filed in support of the NEW ZEALAND MUSIC AWARDS application, and updated information regarding the event promoted under that trade mark between 2016 – 2019

The meaning of “any other circumstances” in section 18(2) has seldom been considered. However, in Le Cordon Bleu the High Court³ found that the concept includes but is not limited to the following circumstances:

1. Where goods or services “could on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the applicant’s activities.”

2. Where the mark is “another in a distinctive family of marks to which distinctiveness will already attach.”

3. Where the mark forms “part of a well-known business name but has been used only in a limited context as a trade mark.”

4. Where subsequent events “assist in establishing the essential quality at the time of registration.”

In directing⁴ that the application proceed to acceptance and publication, the Commissioner found that:

• the words “any other circumstances” in section 18(2) are not limited to the categories described by the Judge in Le Cordon Bleu;
• the trade marks AOTEAROA MUSIC AWARDS and NEW ZEALAND MUSIC AWARDS, share identical second and third words and do not communicate “different ideas” by virtue of the use of English in one and te reo Māori;
• the idea of the two marks are the same as Aotearoa and New Zealand mean the same thing;
• New Zealanders tend to regard Aotearoa and New Zealand as interchangeable;
• This interchangeability of the only non-identical element of the two marks provides a strong basis for attributing the acquired distinctiveness through use of the NEW ZEALAND MUSIC AWARDS mark to the AOTEAROA MUSIC AWARDS mark;
•  No one would seek to use AOTEAROA MUSIC AWARES as a trade mark without improper motive, that is without the intention of exploiting the applicant’s reputation in its registered NEW ZEALAND MUSIC AWARDS trade mark;
• the trade mark AOTEAROA MUSIC AWARDS has acquired distinctiveness on the basis that the New Zealand public would identify it with the applicant’s registered mark and associate it with the event that has long been marketed under NEW ZEALAND MUSIC AWARDS. 

Therefore, as well as providing a reflection on the use of te reo Māori in New Zealand arts and culture, this decision also addresses important points of New Zealand trade mark law, namely:

• whether a te reo Māori word or phrase should be taken as an equivalent of its English translation; and
• what constitutes “any other circumstances” for the purpose of section 18(2).

While similar cases are likely to be rare, it will be interesting to monitor how IPONZ takes notice of and applies this decision, particularly in relation to section 18(2).

Elena Szentivanyi - October 2023

---

1. Recorded Music New Zealand Limited [2023] NZIPOTM 39 (7 September 2023); http://www.nzlii.org/nz/cases/NZIPOTM/2023/39.html.