4.7 Marks that contain different or additional device material

Where the marks in an application differ due to different or additional device material, the marks will only comprise a series if the device material is “the simplest of conventional embellishments, contributing nothing of distinction to the mark as a whole”.¹⁷

Simple borders or backgrounds comprising basic geometrical shapes may be treated as “the simplest of conventional embellishments”.

The following marks were held not to comprise a series on the grounds that the star logo in the second mark contributed an additional dimension to the overall identity of the mark and did not qualify as a “conventional embellishment”:¹⁸

In Trade Mark Application No. 310672 ¹⁹ Assistant Commissioner Scott concluded that the following three marks did not comprise a series:

The application failed as a series because the stylisation of the “o” in the first and second marks was neither a “known conventional script” nor “the simplest of conventional embellishments”. Furthermore, the symbol was found to be an ideogram meaning “on and off”, with the result that the idea of the mark was altered when the symbol was substituted for the letter “o”.

In another IPONZ decision²⁰ the following marks were considered:

The Assistant Commissioner concluded that the application was not a series as the atom device was a material particular of the second mark, but not of the first. The atom device contributed to the idea of the second mark, and its inclusion substantially altered the identity of the mark.

In Trade Mark Application No. 621079 ²¹ the applicant provided written submissions arguing that the following marks only differed from each other in the way that they presented the concept of “heart beat”:

The Assistant Commissioner disagreed with the applicant’s submissions, considering instead that the marks had different ideas and were likely to be pronounced differently.

Footnotes

¹⁷ Lynson above n 2.

¹⁸ Trade Mark Application No. 217058, Splenda and Splenda logo, in class 1 (9 April 1997) unreported, Assistant Commissioner McCardle.

¹⁹ On, On and on, in class 41 (20 April 2001) unreported, Assistant Commissioner Scott.
²⁰ Trade Mark Application No. 303988, WEB WORKS and WEB WORKS logo, in class 35 (17 July 2001) unreported, Assistant Commissioner Scott.

²¹ BEAT logo and HEART BEAT, in class 25 (18 December 2001) unreported, Assistant Commissioner Robinson.