13. Series mark

Marks that differ in respect of “statements of number” will constitute a series provided the marks resemble each other in their material particulars. The following marks would comprise a series, for example:

A-CHOO 200 FACIAL TISSUES

A-CHOO 100 FACIAL TISSUES

The “statements of number” must not be presented in such a way that they are a material particular of the marks in which they appear.

The marks below do not constitute a series because the number 6 in the second mark is represented in such a way that it is a material particular of that mark. It follows that although the second mark might be said to differ from the other two in respect of a “statement of number”, the three marks do not resemble each other in their material particulars.

Note, however, that the first and third marks form a series of two marks, as “6 pack” in the third mark does not constitute a material particular of that mark.

Marks that differ in respect of “statements of price” will constitute a series provided the marks resemble each other in their material particulars. The following marks would comprise a series, for example:

BRIGHTENERS CARDS NZ $4.95

BRIGHTENERS CARDS NZ $5.50

Marks that differ in respect of “statements of quality” will constitute a series provided the marks resemble each other in their material particulars.

In order to qualify as a “statement of quality” the material must serve simply to inform consumers of the qualitative nature of the goods or services. Assistant Commissioner Duffy made the following comments in an IPONZ hearing decision concerning section 30(2) of the Trade Marks Act 1953:¹¹

In my view the purpose of section 30(2) is to allow a series of marks to be registered in circumstances where the quality of the goods or services represented by each mark may differ and so there needs to be a different or separate statement about their quality. … Statements of this nature serve only to inform persons of the qualitative character of the goods or service which the mark represents and are not for the purpose of distinguishing the applicant’s mark from that of others. Section 30(2) does not allow statements of the quality of the goods or service for the purpose of distinguishing the applicant’s mark from that of others. Once the addition of a statement to a mark begins to have this effect it moves beyond the scope of s.30(2)(b).

In that decision the Assistant Commissioner concluded that the phrases FIRST IN SERVICE and FIRST IN SUPPLY did not constitute “statements of quality”, but rather, were included in the marks in order to distinguish the applicant’s goods and services from those of other traders.

The following marks differ from each other in respect of statements of quality and would constitute valid series:

FLORINA HIGH GRADE WHITE FLOUR

FLORINA STANDARD GRADE WHITE FLOUR

Footnote

¹¹ Trade Mark Application Nos. 280104 and 280105, DairyAssist, DairyAssist first in service, FarmFirst, Farmfirst first in supplies, in classes 37 and 42 (30 May 2000) unreported, Assistant Commissioner Duffy.

Variations in spelling are permissible in a series application, but only if the pronunciation and meaning of the mark are unaffected. In the Lynson decision the Chief Assistant Registrar commented that:¹²

The separation of one word into two, or the running together of two words would be governed by the same considerations: the sound and meaning must remain the same. The appearance of the word or words must also be taken into account when the spelling or physical arrangement of the letters is varied. Minor changes … will be acceptable where more extensive ones will not.

Footnote

¹² Lynson above n 2.

An application may be considered a series where the marks differ due to punctuation but the pronunciation and meaning of the mark are unaffected.

The following marks would constitute valid series, for example:

MNOP                LICK EMS

M.N.O.P             LICK-EMS

M N O P             LICK’EMS

If the punctuation variations alter the pronunciation or meaning of the mark, the identity of the mark is substantially affected and the application will not be a series.

In the Australian hearing decision Kaye Elizabeth Dempster’s Trade Mark Application ¹³ the hearing officer considered the validity as a series of an application for the following six marks: KEDO, kedo, Kedo, K-EDO, k-edo and K-edo. The hearing officer considered that “familiarity with words such as T-shirt, A-frame, U-boat and T-junction prompts similar pronunciation of words where the initial letter is followed by a hyphen”, and concluded that the three hyphenated marks therefore had a different sound to the three un-hyphenated marks. The hearing officer was also of the view that the two sets of marks were unlikely to be immediately recognised as having the same meaning.

The following marks differ solely due to punctuation yet do not comprise a series. The placement of the hyphen in the second mark alters the meaning of the mark, as the words “palm” and “olive” are easily recognisable in the first mark, but not in the second.

PALM-OLIVE

PALMO-LIVE
 

Footnote

¹³ Kaye Elizabeth Dempster’s Trade Mark Application [1992] 23 IPR 669, 1992 AIPC 90-875.

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.

An application may be considered a series where there are differences in type case but the pronunciation and meaning of the mark are unaffected. The marks must be perceived in the same way.

The following marks would comprise series, for example:

SOMNOPAK         HEARTACHE

SomnoPak          heartACHE

somnopak

An application may be considered a series where a different linking element is used but the meaning of the marks is the same.

The following marks would constitute valid series, for example:

FAX AND RELAX         SHOES BY JULIN

FAX & RELAX             SHOES FROM JULIN

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.

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.

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.

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

The following pairs of marks would not be acceptable as series, for example, as only the second mark is identified as being a company name.

MERCURY                         AUTOMEND

MERCURY LIMITED            AUTOMEND PLC

Where the marks in an application differ in respect of letters and/or numerals, the application will not be accepted as a series unless the letters and/or numerals are clearly non-distinctive for the specified goods or services.

Letter combinations comprising two or more characters may be distinctive marks in their own right. The three marks below do not form a series, as they differ in respect of matter of a potentially distinctive character.

ZEPHYR AB

ZEPHYR XMO

ZEPHYR HU

Unstylised single letters are not distinctive. The application below would constitute a series, as the marks differ only in respect of “matters of a non-distinctive character that do not substantially affect the identity of the trade mark”.

CADENZA A

CADENZA B

CADENZA C

Unstylised single numbers are also non-distinctive, hence an application in respect of CADENZA 1, CADENZA 2 and CADENZA 3 would constitute a series.

Where the marks in an application consist of or contain the same word(s) but in different languages, the application will not be accepted as a series.

Visual and aural differences due to the languages used in the application must be given due weight. In addition an application for registration in New Zealand must be viewed as if seen by the ordinary New Zealander. A broad knowledge of languages other than English cannot be assumed of the ordinary New Zealand consumer.

An application to register the five marks PUMPKIN, CITROUILLE, KÜRBIS, CALABAZA and ZUCCA would not constitute a series. While the word in each of the marks is either “pumpkin” or translates to “pumpkin”, the marks are visually and orally different. The ordinary New Zealander would be very unlikely to understand the marks as having the same meaning.

The same comments apply where the marks in an application consist of or contain the same word(s) but in different scripts. For example, an application to register four marks comprising the English word PUMPKIN, “pumpkin” in Arabic script, “pumpkin” in Chinese characters, and “pumpkin” in Japanese characters would not constitute a series.

An application comprising a word and its mirror image will not constitute a series. The differences in presentation are too great, and the plain mark lacks the “idea” of reflection.

In the Australian hearing decision Re Application by Johnson and Johnson²² the hearing officer considered whether an application in respect of the eight cartoon characters below constituted a series.

After considering the comments made in the Lynson²³ decision Mr Williams formulated the following general guidelines regarding applications in respect of several cartoon characters:

Of the eight marks applied for, only marks 5 and 6 were found to be a series. In regard to those marks the hearing officer remarked that:

When considering whether an application in respect of several cartoon characters constitutes a series, examiners should consider a number of factors, including:

• The similarity in appearance of the character(s) in the marks;
• The clothing (if any) worn by the character(s);
• Any props held or used by the character(s);
• Any names ascribed to the character(s);
• The positions assumed by the character(s);
• The activities the character(s) are undertaking; and
• The extent to which the props, costumes and/or activities dominate the character(s).

The variations between each version must be such that they do not substantially affect the identity of the mark.

Footnotes

²² Application by Johnson and Johnson above n 3.

²³ Lynson above n 2.