This matter concerned a notice of intention to reject the following series of mark:
The application is owned by GlaxoSmithKline Consumer Healthcare (UK) IP Limited (“Glaxo”) and covers goods in classes 3, 5 and 21, including oral care preparations, toothpaste, toothbrush, etc.
The view of the New Zealand Trade Marks Office (“IPONZ”) was that the mark is registrable in relation to the class 21 goods and some of the goods specified in classes 3 and 5. However, IPONZ issued a notice of intention to reject the application on the basis that the mark is not sufficiently distinctive in relation to certain goods (closely related to toothpaste).
When considering IPONZ’s view, the Assistant Commissioner noted that the key question was whether the images were in fact a depiction or representation of toothpaste. Overall, the Assistant Commissioner considered that this was not the case, and that if presented to a viewer who was not familiar with any prior advertising or product packaging, the images would not be recognised as toothpaste.
Having made that determination, the Assistant Commissioner pointed out that the potential objection, if there is one, is that highly stylised images of this kind have “become customary in the current language or in the bona fide and established practices of trade”. If that were the case, then registration would be prohibited under section s 18(1)(d) of the Trade Marks Act 2002. However, while the Assistant Commissioner briefly indicated that the evidence provided by Glaxo supports the view that the images were not customary in the established practice of the trade at the relevant time, no final decision was made on this point given that this issue was not raised before the Assistant Commissioner.
The Assistant Commissioner directed IPONZ to accept Glaxo’s trade mark application.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.
Trade Marks Team