4.8 Marks that contain different or additional domain name material

An application for two or more marks consisting of (a) word(s), and (b) the same word(s) conjoined with domain name material, will not form a series.

For example, IPONZ and IPONZ.GOVT.NZ would not comprise a series, as the presence of domain name material in the second mark substantially affects the identity of the mark by identifying it as a web site address. The first mark, in contrast, lacks the “idea” of a web site address.

Where the marks in an application have the same stem and all contain domain name material, the application may constitute a series provided the variations do not substantially affect the identity of the mark.

The following marks would form a series. The .CO in each mark denotes a commercial organisation while the final two-letter combination merely denotes the country in which the web site is domiciled. This would be considered matter of a non-distinctive character that does not substantially affect the identity of the trade mark.

BETAFETA.CO.NZ

BETAFETA.CO.AU

BETAFETA.CO.UK

In contrast, the marks below would not constitute a series as the variations in domain name identifiers substantially affect the identity of the mark. While .CO indicates a commercial organisation, .NET indicates the web site address of an Internet service provider, .ORG denotes a charitable or non-profit-making organisation, and .EDU denotes an educational establishment. In each case the “idea” of the mark is different.

BETAFETA.CO.NZ
BETAFETA.NET.NZ
BETAFETA.ORG.NZ
BETAFETA.EDU.NZ

Marks that would normally constitute a series may not constitute a series when represented as domain names. For example, the marks ZEN1, ZEN2 and ZEN3 would form a series. ZEN1.COM, ZEN2.COM and ZEN3.COM would not form a series, however, as each mark is a separate web site address and therefore each mark has a different identity.