2. Material particulars

The material particulars of the trade marks must be essentially the same in each mark in the series. Any differences between the marks must not substantially affect the identity of the marks when each mark in the series is compared to each of the others.

When comparing the marks, the Examiner will consider the following factors:

• The appearance or “look” of the marks;
• The pronunciation or “sound” of the marks;
• The “idea” or meaning of the marks; and
• Any other factors that might change the “idea” of one mark when compared to the “idea” of the other mark(s).

Confusing similarity not relevant

When considering whether a group of marks comprises a series application, it is not appropriate to consider whether the marks are confusingly similar.¹

Side by side comparison required

When considering whether an application constitutes a series application “the trade marks must be compared side by side, with full attention to detail”.²

Previous acceptances or registrations

When IPONZ has raised concerns regarding the validity of a series application, submissions regarding previous acceptances or registrations will not be considered persuasive. The comments made by Assistant Commissioner Duffy in an IPONZ hearing decision³ are relevant:

I accept that the examples of other marks registered as a series appear to stretch the boundaries of s.30(2). However, that does not justify acceptance of the applicant’s marks for registration as a series. The decision must turn on the language of s.30(2) and whether or not the marks fall within the permitted differences. If they do not, registration must be refused.

While the above comments were made in relation to section 30(2) of the Trade Marks Act 1953, the same reasoning applies to the examination of series applications under the Trade Marks Act 2002.

The Lynson decision

IPONZ refers to the principles laid down in Lynson Australia Pty Ltd’s Application (Lynson)⁴ for general guidance on the issue of whether trade marks constitute a series.

The general requirements for qualification as a series of trade marks were summarised in the Lynson decision as follows:

Briefly, and only in general terms, the variation between members of a series must be such that no additional element or dimension is contributed thereby to the overall identity of the marks; the “idea” of the mark must remain the same. If the marks consist of a word, then that word must be the only element in the identity of each member of the series. The typescript may be varied, but only between known, conventional scripts, not fanciful get-up. The spelling may be varied, but only if the pronunciation and meaning remain unaffected. 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 (such as “pelican” and “pelikan” or “fastfoto” and “fast-foto”) will be acceptable where more extensive ones will not (eg “tablet” and “tabblett” or “tab-let”, “ta-blet” and “tabl-et”).

It is obvious that the addition of a device element to a word mark would, in almost all cases, constitute a substantial alteration to its identity, the only exception being the simplest of conventional embellishments, contributing nothing of distinction to the mark as a whole.

Similarly, the statements or representations referred to by s 39(1)(a) and (b) must be such that they do not contribute to the function that the mark has in distinguishing the proprietor’s goods from those of other traders. They must be clearly and unambiguously separate from those features of the mark by which it, and the goods or services which it identifies, will be known. It is of no assistance that the additional matter is disclaimed, since disclaimed matter may still contribute to the overall identity or “idea” of the mark.
 

Footnotes

¹ Application by Johnson and Johnson [1993] 28 IPR 167 at 169

² Application by Johnson and Johnson above n 3.

³ Milfos International Limited v The Commissioner of Trade Marks [2000] NZIPOTM 19 (30 May 2000).

⁴ Lynson Australia Pty Ltd’s Application [1987] 9 IPR 350.