The development of trade mark law in Australia and New Zealand lags behind the UK and Europe. We can learn much from the overseas experience to gain better outcomes for brand owners here.

Returning to Australia after five years of practising in London in UK and European Community Trade Mark Law it has become readily apparent that Australia and New Zealand lag behind Europe in their approach to particular trade mark issues.  Europeans have a wealth of trade mark cases that we can borrow and use to effect before the Australian and New Zealand registries. 

In Australia, we have outdated notions of what marks are distinctive in particular situations.  We cling to the telephone book rule regarding surnames, a result of over 750 will mean you receive a distinctiveness objection. That approach was abolished over five years ago in Europe in the Nicholls case. This could change and we are seeing arguments based on the Nicholls case succeed in Australia and New Zealand. 

In relation to other types of marks like numbers, slogans and geographic names we also have a host of European case law that can assist with assessing registrability issues in Australia and New Zealand.  For slogans we have the Vorsprung Durch Technik decision from the Port of Justice in 2010 and earlier case law relating to Nestles “Have a Break” mark that was used in conjunction with “Have a Break, Have a Kit Kat”.  All these cases lend support to the registrability of slogans which often face issues in Australia and New Zealand. 

New Zealand has even less of an excuse not to follow the European approach, their law being largely based on the UK Act by way of the Singapore Act. And yet we continue to receive objections from New Zealand based on distinctiveness where the examiner supports the objection with a need to keep free style argument.  That approach was rejected in Europe in 1999 and it’s time for that approach to be updated in New Zealand. 

Just because Australian and New Zealand law hasn’t really caught up with the European approach doesn’t mean we can’t try to use those approaches now. We are in fact seeing that sighting those cases can effectively result in acceptance, before the need to use evidence and incur the further costs of that involves.

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