4.2 Marks that differ due to punctuation

An application may be considered a series where the marks differ due to punctuation but the pronunciation and meaning of the mark are unaffected.

The following marks would constitute valid series, for example:

MNOP                LICK EMS

M.N.O.P             LICK-EMS

M N O P             LICK’EMS

If the punctuation variations alter the pronunciation or meaning of the mark, the identity of the mark is substantially affected and the application will not be a series.

In the Australian hearing decision Kaye Elizabeth Dempster’s Trade Mark Application ¹³ the hearing officer considered the validity as a series of an application for the following six marks: KEDO, kedo, Kedo, K-EDO, k-edo and K-edo. The hearing officer considered that “familiarity with words such as T-shirt, A-frame, U-boat and T-junction prompts similar pronunciation of words where the initial letter is followed by a hyphen”, and concluded that the three hyphenated marks therefore had a different sound to the three un-hyphenated marks. The hearing officer was also of the view that the two sets of marks were unlikely to be immediately recognised as having the same meaning.

The following marks differ solely due to punctuation yet do not comprise a series. The placement of the hyphen in the second mark alters the meaning of the mark, as the words “palm” and “olive” are easily recognisable in the first mark, but not in the second.

PALM-OLIVE

PALMO-LIVE
 

Footnote

¹³ Kaye Elizabeth Dempster’s Trade Mark Application [1992] 23 IPR 669, 1992 AIPC 90-875.