New Announcement: Revision of Sections 2.7, 2.8, and 4 of the New Zealand Trade Mark Practice Guidelines
On 11 March 2026, the Intellectual Property Office of New Zealand (IPONZ) released a major update to its Trade Mark Practice Guidelines. These revisions specifically target Sections 2.7, 2.8, and 4 within the "Absolute Grounds - General" chapter.
The core changes of this update are primarily focused on the following three key areas:
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Section 2.7: International Non-Proprietary Names (INNs)
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Updated the examination standards regarding International Non-Proprietary Names (INNs) for pharmaceutical active substances.
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These names typically refer to the generic names of active pharmaceutical ingredients. If a trademark contains such a name, it may be refused registration due to a lack of distinctiveness or because it is misleading.
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Section 2.8: INN Stems
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Provides clearer guidance for trademark applications containing specific INN stems, aimed at avoiding confusion between trademarks and pharmacological terminology.
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Stems are the common parts used to identify drugs within the same category (e.g., "-cillin" for penicillins). This update is designed to strengthen the protection of these generic pharmacological terms and prevent them from being monopolized by a single manufacturer.
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Section 4: Offensive Trade Marks
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Provides clearer examination guidelines and case illustrations for signs that may cause public unease or be offensive to specific communities (including the Māori).
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This revision aims to ensure that trademarks do not violate public order or morality and respect the multicultural social standards of New Zealand.
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In addition to the aforementioned updates regarding International Non-Proprietary Names (INNs) and offensive trademarks, IPONZ also released several other practice guideline updates around early 2026, covering areas such as bad faith registrations, classification of goods and services, and emerging technologies:
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Bad Faith and Ownership
According to the "Absolute Grounds - General" update on 11 March 2026, IPONZ reaffirmed and refined the examination criteria for handling Bad Faith applications under Section 17(2) of the Trade Marks Act 2002:
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Determination of Ownership: This clause is primarily used to determine whether the applicant is the "rightful owner" of the trademark.
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Grounds for Refusal: If an examiner believes an application involves bad faith squatting or lacks a bona fide intention to use the mark, registration can be directly refused.
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Burden of Proof: The law explicitly stipulates that the burden of proof lies with the applicant. They must demonstrate that their application complies with regulations; otherwise, it may be summarily rejected on the grounds of bad faith.
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Nice Classification, 13th Edition
As of 1 January 2026, New Zealand has officially adopted the 13th edition of the Nice Classification:
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Classification Adjustments: IPONZ has updated the "List of Conflicting Goods and Services," as some items are now classified under different categories.
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Impact on Examination: Although the revised "Table of Conflicting Classes" is for reference only, it indicates that examiners will adopt a broader standard when assessing the similarity of goods and services.
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Comparison Table of Old vs. New New Zealand Trade Mark Systems (2026)
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Category
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Old System (Pre-2026)
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New System
(Post-March 2026)
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Pharmaceutical Names
(INN)
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General examination;
lacked specific detailed guidelines for INN prefixes/suffixes.
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Strict Oversight: Specific guidelines
added for INNs and INN Stems (e.g., "-cillin") to
prevent the monopolization of generic drug terms.
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Offensive Marks
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Focused on general public
order and Māori cultural offense.
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Enhanced Cultural
Sensitivity: Clearer case illustrations provided for signs causing
public unease, specifically emphasizing Māori community
standards.
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Bad Faith (Section 17(2))
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Primarily addressed
during opposition proceedings.
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Proactive Refusal: Examiners can
directly refuse registration if bad faith or lack of "intent to
use" is suspected during initial examination.
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Burden of Proof
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Often shared or shifted
during disputes.
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Applicant-Centric: The law explicitly
places the burden of proof on the applicant to prove they
are the "rightful owner" and have legitimate intentions.
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Nice Classification
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12th Edition (or earlier
versions depending on filing date).
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13th Edition: Adopted as of Jan
1, 2026. Includes updated item classifications and a broader standard
for conflicting goods/services.
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Emerging Tech
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Case-by-case assessment
without formal practice notes.
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New Guidelines: Specific practice
updates addressing NFTs, Metaverse, and AI-related goods/services (as part of
the early 2026 updates).
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For more details, you can refer to the following links:
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