4.3 Marks that appear to be plurals/singulars of each other

An application may be considered a series where one mark is clearly the pluralised form of the other mark.

The following marks would constitute series, for example:

GRAZESTOPPER           YANKEE DOODLE CANDY

GRAZESTOPPERS         YANKEE DOODLE CANDIES

Where there is no recognised singular or plural version of a word, the addition or absence of the letter “s” will change the meaning or “idea” of the mark. CHARLES and CHARLE would not constitute a series, for example, as CHARLES is a well-known forename and surname, whereas CHARLE has no meaning. The two marks have different “ideas” and hence different identities.

Assistant Commissioner Roberts considered whether an application for the marks SONIK and SONIX constituted a series.¹⁴ The applicant had argued that SONIX was merely the phonetic plural of SONIK and that the variation between the marks was therefore minor. The Assistant Commissioner concluded that the application did not constitute a series, as both SONIK and SONIX are meaningless unless they are seen as the phonetic equivalents of “sonic” and “sonics” respectively. “Sonics” (a noun) is not the plural of “sonic” (being an adjective with a different meaning to “sonics”). The Assistant Commissioner further noted that the substitution of the final letter in a word with the letter “x” is not the standard way in which plurals are formed.

While it would be unusual to receive an application in respect of a surname and it’s plural, an applicant might apply to register a surname and its possessive in a single application, and apostrophes are frequently omitted nowadays. Note, however, that the addition of the letter “s” to a surname can substantially affect the identity of the mark. For example, the addition of the letter “s” to the surnames WATT and BROOK will result in two different surnames, namely WATTS and BROOKS. As one surname has a different identity to another surname, two distinct surnames cannot comprise a series. An application for the marks WATT and WATTS would not constitute a series for this reason. In contrast, the marks WATT and WATT'S would constitute a series, as WATT'S is clearly the possessive form of the surname WATT.

Footnote

¹⁴ Trade Mark Application Nos. 601988 – 601989, SONIK and SONIX, in classes 29 and 30 (12 January 2001) unreported, Assistant Commissioner Roberts.