5. Other matters of a non-distinctive character

Variations in typescript are permissible in a series application, “but only between known, conventional scripts, not fanciful get-up”. ⁹
 

Valid

The differences between the marks are conventional variations or embellishments and cannot be described as fanciful get-up.

Invalid

In an IPONZ decision¹⁰ the above 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”:

Footnote

⁹ Lynson above n 2.

¹⁰ Paul Beckett v The Commissioner of Trade Marks [2002] NZIPOTM 3 (30 January 2002)

An application may be considered a series where the marks differ due to minor changes in spelling and the variations are regarded as alternative spellings of the same word(s).

Where dictionary words are concerned, only common misspellings should be allowed. The differences in spelling must not change the pronunciation or meaning of the mark, nor affect the look of the marks.

Valid:

CENTRE-FUGUE
CENTER-FUGUE
 

Invalid:

MIXCHANGER
MYXCHANGER

In this example the change in spelling alters both the pronunciation and meaning of the mark. The first mark would be pronounced and understood as “mix changer”, whereas the second mark is more likely to be pronounced and understood as “my exchanger”. The “idea” of the mark has changed. For these reasons the two marks would not comprise a valid series.

An application may be considered a valid series where one mark consists of two or more words and the other mark consists of the same words conjoined. However the differences in presentation must not alter the pronunciation or meaning of the mark.

Valid:

BLACK POINT
BLACKPOINT

Invalid:

CATSCAN
CAT SCAN
 

These marks do not constitute a valid series as the first mark has two potential pronunciations and meanings (“cats can” and “cat scan”), whereas the second mark has only one (“cat scan”).

An application may be considered a valid series where one mark is clearly the pluralised form of the other mark. Where there is no recognised singular or plural version of a word, pluralising the word will change the meaning or “idea” of the mark.

Valid

GRAZE
GRAZES

The second mark a recognised pluralisation of the first mark.

Invalid

CHARLE
CHARLES

CHARLES is a well-known forename and surname whereas CHARLE has no meaning. The two marks have different “ideas” and hence different identities and accordingly do not resemble each other in their material particulars.

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

Valid

MNOP

M.N.O.P

In each case, the pronunciation and idea of the marks remains unchanged, and the visual differences minimal.

Invalid

PALM-OLIVE

PALMO-LIVE

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.

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.

Valid:

HEARTACHE
heartache

However should the variations in the type case mean the mark could be pronounced differently or have a different meaning, the application is unlikely to be considered a valid series. In practice this situation rarely arises.

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

Valid:

FUN & RELAX
FUN AND RELAX

Invalid:

SAVE FOR COUPONS
SAVE 4 COUPONS

Even though the pronunciation of the marks is the same, each one of these can give a different idea and as such do not resemble each other in their material particulars. The first mark has the idea of saving to get coupons, while the second mark has the additional idea of saving for four coupons.

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)

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.

Valid:

Unstylised single letters are not considered distinctive. The marks therefore constitute a valid series.
 

 Invalid:

Letter combinations comprising two or more characters may be distinctive marks in their own right. These marks therefore do not form a valid series.

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.

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 as only one of the marks is identified as being a company name.

Invalid:

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

In the Australian hearing decision Re Application by Johnson and Johnson¹³ 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 Lynson¹⁴ 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

¹³ Application by Johnson and Johnson above n 3.

¹⁴ Lynson above n 2.