IPA trademark 7.-examples-of-invalid-series-trade-marks — IP Australia Trade Marks Manual of Practice and Procedure – 13.7. Examples of Invalid Series Trade Marks

Trade Marks Act 1995 Trade Mark Regulations 1995 7.1 Examples of trade marks that do not resemble each other in material particulars The below are examples of invalid series, because the trade marks do not resemble each other in material particulars. The differences are such that they affect the identity of the trade marks when each member of the series is compared to each of the others. Trade marks Example 1 IDAK MELBOURNE IDAK SYDNEY The large difference in the relative size of the words in each trade mark significantly changes the prominence of the shared IDAK, as well as the overall visual impression. Example 2 Class 25: Clothing. Firstly, GALAXY is not a “name of a place”, and therefore is not a section 51(1)(b) statement. Moreover, GALAXY is distinctive on clothing (it has no ordinary descriptive relevance, unlike MELBOURNE), and is a visually prominent part of the mark (being larger than IDAK). As a result, it is likely to be taken as an identifying feature. Example 3 SYDNEY CLOTHING; MELBOURNE CLOTHING Class 25: Clothing. The trade marks differ only by a statement as to “names of places” (s 51(1)(b)). However, the shared word CLOTHING is purely descriptive of the claimed goods, and is at the end of two purely descriptive phrases. CLOTHING is not likely to be taken by consumers as an identifying feature of these trade marks. Therefore, they do not resemble each other in material particulars. 7.2 Examples of trade marks that differ in ways other than those allowed in paragraphs 51(1)(a), (b) or (c) Although all of the below trade marks may resemble each other in material particulars, the ways in which they differ are not specified in paragraph 51(1)(a),(b) or (c) . Trade marks Example 1 ; Example 2 Example 3 IDAKS IDAKZ Example 4 IDAK VIEW IDAKVIEW Example 5 51(1) (a) The following are examples of invalid series containing differences that do not qualify under paragraph 51(1)(a) as statements or representations as to the goods or services in relation to which the trade marks are to be used . Trade marks Comments Example 1 IDAK ACCOUNTING IDAK MEDICAL Class 35: Accounting Examples 1 and 2 include words that do not indicate the goods/services in relation to which the trade marks are to be used - MEDICAL and REPAIRS Example 2 IDAK REPAIRS IDAK REFRIGERATORS Class 11: Refrigerators ​​​​​​​ 51(1) (b) The following are examples of invalid series containing differences that do not qualify under paragraph 51(1)(b) as statements or representations as to number, price, quality or names of places . Trade marks Comments Number Example 1 IDAK 2 IDAK TWICE TWICE is not a statement or representation as to number, ie. it does not include a number (TWO or 2) per se. Example 2 IDAK 6 pack IDAK Unlimited UNLIMITED is not a statement or representation as to number. Price Example 3 IDAK £ IDAK $ IDAK ¥ The symbols refer to currency rather than price. Quality Example 4 IDAK DELUXE IDAK BEGINNING BEGINNING is not a statement or representation as to quality. Example 5 Class 30: Tea/coffee IDAK PREMIUM IDAK WEATHER PROOF WEATHER PROOF is not a statement or representation as to quality in relation to tea/coffee Names of Places Example 6 IDAK MELBOURNE IDAK EAST East is not the name of a place Example 7 IDAK GOLD COAST IDAK REGIONAL Regional is not the name of a place 51(1)(c) The following are examples of invalid series containing differences that do not qualify under paragraph 51(1)(c) as the colour of any part of the trade mark Trade marks Comments Example IDAK BLUE; IDAK RED Class 45: pet-sitting services The words RED and BLUE here are not the colour of any part of the trade mark. They are also not statement as to the services, which are not ordinarily described in terms of colour 7.3 Trade marks which resemble each other in material particulars, and differ in one or more of the ways specified in paragraphs 51(1)(a),(b) or (c), but incorporate a further change that renders them an invalid series. Trade marks Difference that is not allowed Example 1 IDAK 1 IDAKS 2 Differences in spelling Example 2 IDAK CLOTHING idak FOOTWEAR Use of upper and lower case letters Example 3 IDAK 1 IDAK 2 Underline Example 4 IDAK $2.00 IDAC $10.00 Differences in spelling Example 5 IDAK STANDARD I DAK DELUXE Separation of word