The New Zealand Institute for Plant and Food Research Limited [2018] NZIPOTM 20 (20 June 2018)
The New Zealand Institute for Plant and Food Research Limited (“NZ Institute”) applied to register trade mark application No. 955412 PLANT AND FOOD RESEARCH; PLANT & FOOD RESEARCH (series) in Classes 9, 16, 41, 42 and 44.
At examination, the trade mark received an objection under Sections 18(1)(b) and (c) on the basis the mark described the goods and services applied for, and lacked sufficient distinctive character to be eligible for registration.
After various correspondence and evidence of use, IPONZ accepted that the mark was sufficiently distinctive in relation to some of the goods and services, which were divided out into a separate application which proceeded to acceptance.
However, the objections were maintained in relation to a broad range of goods and services in each of the applicant’s classes of interest. A formal notice of intention to reject the application in relation to the remaining goods and services was issued on 11 August 2017. In issuing the rejection, IPONZ held that the evidence filed to support the application did not show the mark had taken on a secondary meaning in the sense that a significant number of the relevant consumers would recognise it as a badge of origin. NZ Institute sought a hearing in relation to the notice of intention to reject.
At the hearing, NZ Institute was successful in demonstrating that, through significant use in New Zealand including evidence of market share and awareness of the mark amongst relevant consumers, that the mark had acquired a secondary meaning and was sufficiently distinctive in relation to the objected goods and services. Accordingly, the application proceeded to acceptance.
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