Section 18 Distinctiveness in New Zealand: When IPONZ Will Refuse a Descriptive Mark

1. What is a Section 18 refusal?

A Section 18 refusal is issued when the Intellectual Property Office of New Zealand (IPONZ) determines that a trademark lacks the distinctive character required for registration in New Zealand.

Under Section 18(1) of the Trade Marks Act 2002, the Commissioner must not register a trade mark that:

• Has no distinctive character (s18(1)(b)),
• Consists only of signs that designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods or services (s18(1)(c)), or
• Consists only of signs that have become customary in the current language or in the bona fide and established practices of trade (s18(1)(d)).

In practice, this provision covers both generic terms (common names for the goods or services themselves) and descriptive terms (words that directly convey a feature, quality, or purpose). It is one of the most common grounds for refusal at IPONZ, particularly for English-language marks that describe what the applicant sells.

2. Why does IPONZ refuse marks lacking distinctive character?

Trademark law in New Zealand exists to protect brand identifiers — not ordinary words that competitors need to describe their own products. If one business could monopolize a descriptive or generic term, it would gain an unfair advantage and prevent honest competitors from describing what they offer.

By enforcing Section 18, IPONZ aims to:

• Preserve fair competition in the New Zealand market,
• Keep commonly used language available to all traders, and
• Ensure that registered trademarks function as indicators of a single commercial source rather than as product descriptions.

This is not a judgment on the quality or commercial value of a business. It is a legal determination about whether the chosen wording is capable of distinguishing one trader's goods from another's.

3. The "average consumer" test

Section 18(2) requires an overall assessment of the ability of the mark to distinguish the applicant's goods or services. IPONZ makes this assessment through the eyes of the average consumer of the goods or services concerned.

The core questions examiners ask are:

• Would the average New Zealand consumer perceive the sign as a badge of origin, or merely as information about the goods or services?
• Would other traders, in the ordinary course of their business and without improper motive, legitimately wish to use the same sign for their own goods or services?

If the answer to the second question is yes, the mark will generally be refused unless the applicant can demonstrate acquired distinctiveness. New Zealand practice in this area is closely aligned with UK and European jurisprudence, because the Trade Marks Act 2002 was modelled on the UK Trade Marks Act 1994.

4. Generic and customary terms

A generic term is the common name of the goods or services themselves, or a sign that has become customary in trade. Generic terms can never function as trademarks for those goods, regardless of how long they have been used.

Examples include filing "Honey" for honey products, or "Builder" for construction services. Because they identify the product or service category itself, allowing one trader to register them would foreclose the entire market.

Signs refused under s18(1)(a) — signs that are not capable of being represented graphically or of distinguishing at all — cannot be saved by evidence of use.

5. Descriptive terms under Section 18(1)(c)

A trademark is considered merely descriptive if an average New Zealand consumer can immediately understand something about the goods or services without imagination, thought, or interpretation.

Common categories of descriptive marks include terms that describe:

• The purpose or function of the service,
• A feature or characteristic of the product,
• The quality, performance, or grade of the goods,
• The geographical origin of the goods (e.g., well-known New Zealand place names for local produce),
• The intended users or customers, or
• The subject matter of the service.

Laudatory wording — praise terms such as "Best," "Premium," or "Finest" — is generally treated as descriptive under New Zealand practice because it conveys promotional information rather than serving as a source identifier.

6. Geographical names: a particular New Zealand concern

New Zealand's economy is strongly associated with regional produce — wine, honey, dairy, seafood — and IPONZ pays close attention to geographical origin objections under s18(1)(c).

A geographical name will face refusal if the place is, or could plausibly become, associated with the goods in the mind of the average consumer. The better known the place and the more plausible the association with the goods, the stronger the objection. Marks containing names such as "Marlborough" for wine or "Manuka"-related signs for honey products attract particularly careful scrutiny.

7. The stylization trap: fonts are not enough

A frequent misconception is that presenting a descriptive word in a stylized font or simple colour scheme will overcome a Section 18 objection. Under IPONZ practice, it will not.

An applicant relying on a logo to carry distinctiveness should ensure that:

• The device element is independently capable of distinguishing the goods,
• The device is not itself a customary symbol for the sector, and
• The overall commercial impression is dominated by something other than the descriptive wording.

Examiners assess the mark as a whole, but a descriptive word does not become registrable simply because it has been typeset in an unusual font.

8. Acquired distinctiveness: Section 18(2)

A descriptive mark is not automatically unregistrable. Section 18(2) provides that a refusal under s18(1)(b), (c), or (d) does not apply if, before the date of application, the mark acquired a distinctive character as a result of the use made of it or of any other circumstances.

The applicant bears the burden of proof. Evidence supporting acquired distinctiveness typically includes:

• Duration and consistency of use in New Zealand,
• Local sales figures and market share,
• Advertising spend directed at the New Zealand market,
• Marketing materials showing the mark used as a brand,
• Press coverage and media recognition within New Zealand, and
• Declarations from trade sources and consumer recognition surveys.

Evidence from outside New Zealand is generally given limited weight. IPONZ is concerned with whether New Zealand consumers recognize the mark as a brand, not whether it is famous elsewhere. Critically, the distinctive character must have been acquired before the filing date — use commenced after filing cannot cure the defect.

9. Responding to a Section 18 compliance report

When IPONZ raises Section 18 in a compliance report, the applicant has several response strategies, depending on the facts:

• Argue that the mark is suggestive, not descriptive — showing that some mental step or interpretation is required to connect the mark to the goods.
• Submit evidence of acquired distinctiveness under Section 18(2), focused on the New Zealand market before the filing date.
• Add or strengthen a figurative element to create a combined mark in which the device carries distinctiveness.
• Limit the goods and services to a narrower specification where the descriptive concern is less acute.

Not every objection should be challenged on the merits. Where the wording is clearly descriptive and evidence of use is thin, redesigning the mark is often a faster route to registration.

10. Best practices before filing in New Zealand

Distinctiveness issues are far easier to address before filing than after. Applicants considering a New Zealand application should:

• Ask the "other traders" question honestly — would competitors legitimately need this word to describe their own goods?
• Avoid laudatory and geographical wording unless the brand has substantial pre-filing use in New Zealand.
• Consider a combined mark from the outset if the brand contains descriptive wording, ensuring the device is independently distinctive.
• Preserve evidence of use — invoices, advertising, and market data — if a descriptive mark is commercially important.
• Check for Māori-language meanings — a word that appears invented in English may be descriptive, or culturally significant, in te reo Māori.

11. Summary: Section 18 before you file in New Zealand

A Section 18 refusal means that IPONZ considers the mark to lack distinctive character — either because it is generic, descriptive, or customary in trade. It is not a judgment on the business itself, but on whether the chosen sign can serve as a source identifier in the New Zealand market.

Key takeaways:

• Section 18 covers generic, descriptive, customary, and geographical signs, assessed through the eyes of the average New Zealand consumer.
• Minor stylization of a descriptive word is insufficient — the added device must itself be distinctive.
• Acquired distinctiveness under Section 18(2) requires evidence of recognition in New Zealand, before the filing date.
• Generic terms and signs incapable of distinguishing cannot be cured by evidence of use.
• Pre-filing screening of both English and te reo Māori meanings is the most efficient way to avoid a refusal.

Understanding Section 18 in advance helps set realistic expectations and allows applicants to choose a New Zealand filing strategy that supports both immediate registration and long-term brand protection.