Shape Trade Marks - Confirmation of Availability

Under the current Trade Marks Act 1953, the definition of "sign" does not specifically include reference to shape. Since amendments to the definition of "sign" in 1994, IPONZ's practice, however, has been to accept that shape marks are registrable under the Act and it has regularly registered such marks. On 30 August 2002, Assistant Commissioner Brendan Brown QC issued a decision in Re Application by Société des Produits Nestlé SA to the effect that shape marks were not registrable under the Trade Marks Act 1953.

In a policy decision released on 29 November 2002, IPONZ announced that it considered shape trade marks were indeed registrable under the current Act. Amendments to the definitions of "trade mark" and "sign" in 1994 specifically implemented Article 15 of the TRIPs Agreement. IPONZ regarded the inclusive definition of "sign" as giving flexibility as to what might be registered provided that the sign was "capable of distinguishing" and "capable of being represented graphically". Accordingly, IPONZ advised that shape marks would continue to be registered.

This will be a short-lived issue in any event. The Trade Marks Act 2002 which is expected to come into force in the second half of 2003, specifically includes "shape" in the definition of "sign".