3.3 Marks that differ in respect of statements of quality

Marks that differ in respect of “statements of quality” will constitute a series provided the marks resemble each other in their material particulars.

In order to qualify as a “statement of quality” the material must serve simply to inform consumers of the qualitative nature of the goods or services. Assistant Commissioner Duffy made the following comments in an IPONZ hearing decision concerning section 30(2) of the Trade Marks Act 1953:¹¹

In my view the purpose of section 30(2) is to allow a series of marks to be registered in circumstances where the quality of the goods or services represented by each mark may differ and so there needs to be a different or separate statement about their quality. … Statements of this nature serve only to inform persons of the qualitative character of the goods or service which the mark represents and are not for the purpose of distinguishing the applicant’s mark from that of others. Section 30(2) does not allow statements of the quality of the goods or service for the purpose of distinguishing the applicant’s mark from that of others. Once the addition of a statement to a mark begins to have this effect it moves beyond the scope of s.30(2)(b).

In that decision the Assistant Commissioner concluded that the phrases FIRST IN SERVICE and FIRST IN SUPPLY did not constitute “statements of quality”, but rather, were included in the marks in order to distinguish the applicant’s goods and services from those of other traders.

The following marks differ from each other in respect of statements of quality and would constitute valid series:

FLORINA HIGH GRADE WHITE FLOUR

FLORINA STANDARD GRADE WHITE FLOUR

Footnote

¹¹ 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.