5.8 Marks that contain different or additional device material

In the majority of cases, the addition of device material to a mark will mean the marks will not resemble each other in their material particulars. The only circumstances where the marks will be considered a series are where the device material is “the simplest of conventional embellishments, contributing nothing of distinction to the mark as a whole”.¹¹

Valid:

FLORINA

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

Invalid:

In an IPONZ decision¹² the above 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.

Footnotes

¹¹ Lynson above n 2.
¹² Telecom Directories Ltd [2001] NZIPOTM 31 (17 July 2001)