1. Introduction

An applicant may apply to register more than one trade mark in a single application providing the application meets the requirements set out in the definition of “series of trade marks” in section 5 of the Trade Marks Act 2002 (“the Act”).

Where an applicant applies to register more than one trade mark in a single application that is called an application to register a series of trade marks.

Like a normal application, an application for the registration of a series of trade marks may be made in respect of goods or services in one class, or goods and/or services in multiple classes.¹

Definition of “series of trade marks” in section 5 of the Act

Section 5 of the Act states that a “series of trade marks” means:

… a number of trade marks for the same goods or description of goods or the same services or description of services (as the case may be) that –

(a) resemble each other in their material particulars; and

(b) differ only in respect of -

(i) statements of the goods or services for which they are, or are proposed to be, used; or

(ii) statements of number, price, quality, or names of places; or

(iii) other matters of a non-distinctive character that do not substantially affect the identity of the trade mark; or

(iv) colour

In order to qualify as a series, the marks in the application must therefore:

1. Resemble each other in their material particulars; and
2. Differ from each other only in terms of:

(a) Statements of the goods or services for which the marks are used, or are proposed to be used; or

(b) Statements of number, price, quality or names of places; or

(c) Other matters of a non-distinctive character that do not substantially affect the identity of the trade mark; or

(d) Colour.

Resemble each other in their material particulars

As indicated above, to qualify as a series the marks in an application must resemble each other in their material particulars.

This means that the features of the trade mark must be essentially the same in each mark in the series. The differences between the marks must not substantially affect the identity of the marks when each member of the series is compared to each of the others.
When comparing the marks, examiners must take into account:

• The appearance or “look” of the marks;
• The pronunciation or “sound” of the marks;
• The “idea” or meaning of the marks; and
• Any other factors that might change the “idea” of one mark when compared to the “idea” of the other mark(s).

The Lynson decision

IPONZ refers to the principles laid down in Lynson Australia Pty Ltd’s Application² (Lynson) for general guidance on the issue of whether trade marks constitute a series.

The general requirements for qualification as a series of trade marks were summarised in the Lynson decision as follows:

Briefly, and only in general terms, the variation between members of a series must be such that no additional element or dimension is contributed thereby to the overall identity of the marks; the “idea” of the mark must remain the same. If the marks consist of a word, then that word must be the only element in the identity of each member of the series. The typescript may be varied, but only between known, conventional scripts, not fanciful get-up. The spelling may be varied, but only if the pronunciation and meaning remain unaffected. The separation of one word into two, or the running together of two words would be governed by the same considerations: the sound and meaning must remain the same. The appearance of the word or words must also be taken into account when the spelling or physical arrangement of the letters is varied. Minor changes (such as “pelican” and “pelikan” or “fastfoto” and “fast-foto”) will be acceptable where more extensive ones will not (eg “tablet” and “tabblett” or “tab-let”, “ta-blet” and “tabl-et”).

It is obvious that the addition of a device element to a word mark would, in almost all cases, constitute a substantial alteration to its identity, the only exception being the simplest of conventional embellishments, contributing nothing of distinction to the mark as a whole.

Similarly, the statements or representations referred to by s 39(1)(a) and (b) must be such that they do not contribute to the function that the mark has in distinguishing the proprietor’s goods from those of other traders. They must be clearly and unambiguously separate from those features of the mark by which it, and the goods or services which it identifies, will be known. It is of no assistance that the additional matter is disclaimed, since disclaimed matter may still contribute to the overall identity or “idea” of the mark.

Confusing similarity not relevant

When considering whether a group of marks comprises a series application, it is not appropriate to consider whether the marks are confusingly similar. In Application by Johnson and Johnson the comment was made that:³

… not all trade marks which might be deceptively similar … will constitute a series. The administrative purpose of this is obvious, as it cannot have been the intention of the legislature that an applicant might, for a single fee, obtain registration of not just one trade mark but of all those others which might, allowing for imperfect recollection, be taken for the first mark or otherwise be deceptively similar to it.
 

Side by side comparison required

The same case made it clear that while a side-by-side comparison was not the appropriate test when considering the issue of whether two marks were confusingly similar, when considering whether an application constituted a series application “the trade marks must be compared side by side, with full attention to detail”.⁴

Registrability a separate issue

The question of whether the marks in an application comprise a series is totally separate to the question of whether the marks are registrable under the Act.

It is possible for the marks in an application to constitute a series, yet for the same marks to be not registrable under either Subpart 2 ⁵ or Subpart 3 ⁶ of Part 2 of the Act.

It is also possible that an application may constitute a series, yet be allowed to proceed in respect of only one of the marks because only that one mark is considered registrable under the Act.

Previous acceptances or registrations

When IPONZ has raised concerns regarding the validity of a series application, submissions regarding previous acceptances or registrations will not be considered persuasive. The comments made by Assistant Commissioner Duffy in an IPONZ hearing decision⁷ are relevant:

I accept that the examples of other marks registered as a series appear to stretch the boundaries of s.30(2). However, that does not justify acceptance of the applicant’s marks for registration as a series. The decision must turn on the language of s.30(2) and whether or not the marks fall within the permitted differences. If they do not, registration must be refused.

While the above comments were made in relation to section 30(2) of the Trade Marks Act 1953, the same reasoning applies to the examination of series applications under the Trade Marks Act 2002.

Footnotes

¹ See section 32(1) of the Act.

² Lynson Australia Pty Ltd’s Application [1987] 9 IPR 350.

³ Application by Johnson and Johnson [1993] 28 IPR 167 at 169.

⁴ Application by Johnson and Johnson above n 3.

⁵ Sections 17 to 21 of the Act.

⁶ Sections 22 to 30 of the Act.

⁷ Trade Mark Application Nos. 280104 and 280105, DairyAssist, DairyAssist first in service, FarmFirst, Farmfirst first in supplies, in classes 37 and 42 (30 May 2000) unreported, Assistant Commissioner Duffy.