4.6 Marks represented in different styles or fonts

Variations in typescript are permissible in a series application, “but only between known, conventional scripts, not fanciful get-up”.¹⁵

The following marks would be acceptable as series. The differences between the marks are conventional variations or embellishments and cannot be described as fanciful get-up:

Joan Bloggs          kaboozle

Joan Bloggs         kaboozle

Joan Bloggs        kaboozle

In a recent IPONZ decision ¹⁶ the following marks were held not to be a series on the grounds that, inter alia, the stylisation in the second mark fell into the realm of “fanciful get-up”:

If the stylisation is such that an element in one mark is more prominent than in the other mark, the application may not constitute a series. In the example below the letter “p” in the first mark is considerably larger than the other letters in that mark, so is considered to be a “material particular” of the first mark. There is no equivalent “material particular” in the second mark, hence the two marks do not resemble each other in their material particulars.

DELPHA
DELPHA

In contrast, the marks below do comprise a series. While FIELDMAN is more prominent in the second mark, it is a material particular of both of the marks. The enlargement of FIELDMAN in the second version merely serves to highlight the distinctive element in the mark.

A signature may be part of a series if the name in the signature is clearly legible and the signature does not add an additional element to, or change the identity of, the trade mark. The signature must be similar in visual impact to the other marks in the application.

Footnotes

¹⁵ Lynson above n 2.

¹⁶ Trade Mark Application Nos. 618218 – 618222, BLOKART and blokart (stylised), in classes 9, 22, 25, 28 and 35 (30 January 2002) unreported, Assistant Commissioner Duckworth.