5. Colour

In order to qualify as a series under option (iv) of the definition of “series of trade marks” in section 5 of the Act, the marks in an application must:

• Resemble each other in their material particulars, and
• Differ only in respect of colour.

Colour must not be the major or only distinctive element in the mark. Where colour is the major or only distinctive feature in a mark, the absence or variation of the colour(s) in the other mark(s) will prevent the application from constituting a series.

The following marks would not form a series, for example.²⁴ While the marks differ solely in respect of colour, colour is the only distinctive feature, and the variation in colour means that the marks do not resemble each other in their material particulars.

Pursuant to section 19(2) of the Act, a mark that ”is, or is to be, registered without limitation of colour is, or will be, registered for all colours”. It follows that where the marks in a series differ only in respect of colour, a colour limitation must be entered in respect of the coloured versions of the mark. In the absence of a colour limitation there will be no difference between the marks and the application cannot comprise a series.

IPONZ requires that all colour limitations must include descriptions of the colours using a widely known and readily available colour standard.²⁵ The colour standard may be the Pantone® colour system, or may be some other widely known and readily available colour standard.

Footnotes

²⁴ The marks appear as:

²⁵ See regulations 44(g) and 44(h) of the Trade Mark Regulations 2003.