Series Application in New Zealand

New Zealand’s trade mark law provides a powerful, cost-effective tool called a “series application.” This allows you to file a single application for multiple trade marks, provided they meet a very specific and strict set of legal criteria.

What Is a Series of Trade Marks?

A series application is defined in Section 5 of the Trade Marks Act 2002. At its core, a “series” is a group of marks that are almost identical. The law states that to be a valid series, all the marks in the application must “resemble each other in their material particulars”.

This “material particulars” test is the foundation of the entire assessment. It means the essential “look, sound, and idea” of the marks must be the same. Any differences between them must be so minor that they do not “substantially affect the identity of the trade mark”.

Confusing “Series” with “Similar”

The first and most critical mistake applicants make is confusing the test for a series with the test for infringement. The test for infringement (or a “confusing similarity” objection) is about whether an average consumer, with an imperfect memory, would be confused between two marks. The test for a series is far stricter. The examiner is not asked to consider consumer confusion. Instead, they will compare your marks “side by side, with full attention to detail”.

Under this intense scrutiny, any difference that adds a “new element or dimension” or changes the “idea” of the mark will invalidate the series. For this reason, you cannot rely on the fact that another, seemingly broad series was accepted in the past. IPONZ is clear that “submissions regarding previous acceptances or registrations will not be considered persuasive”. Each application is judged on its own.

The Four Allowable Differences

For your application to be a valid series, the marks must be identical in all their material particulars, and differ only in one of the following four ways:

• Statements of the goods or services.
• Statements of number, price, quality, or place.
• Colour.
• Other matters of a “non-distinctive character.”

Our job is to ensure that any variations in your marks fit perfectly into one of these four categories.

Differences in Informative Wording

You can file a series for a mark where the only change is the addition of purely informative, non-distinctive text. This text must not be part of the brand itself, but rather a descriptor of the goods, price, quality, or place.

For example, a valid series could include:

• Goods: FLORINA mango chutney and FLORINA tomato relish.
• Number: FLORINA 50 Facial Tissues and FLORINA 100 Facial Tissues.
• Price: FLORINA $5.95 and FLORINA $4.95.
• Quality: FLORINA High Grade Flour and FLORINA Standard Grade Flour.
• Place: FLORINA Wellington and FLORINA Dunedin.

The key, as outlined in the guiding Lynson Australia Pty Ltd’s Application [1987] 9 IPR 350 case, is that this text must be “clearly and unambiguously separate from those features of the mark” by which it is known.

This is also where applications often fail. You cannot use this provision to register a series of different slogans or branding messages. For instance, FIRST IN SERVICE and FIRST IN SUPPLY would not be a valid series, as these phrases are intended to be distinctive, not merely informative statements of quality. Likewise, a series of ZG101 and ZG102 would be invalid because the number is “an integral part of the marks,” not a separate statement about the mark.

Differences in Colour

This is a very common and useful part of the series provision. You can register your mark in black and white and in a colour version in the same application, as they “differ only in respect of colour”. For example, a series of FLORINA (in black) and FLORINA (in red) is valid.

However, this comes with a critical exception: if the colour itself is a distinctive feature of the mark (e.g., a complex, multi-colored logo), then changing those colours does substantially affect the mark’s identity. Such an application would be deemed an invalid series.

“Other Matters of a Non-Distinctive Character”

This is the most complex category and the source of most series objections. The core test here is that the differences must “not substantially affect the identity of the trademark” . This means the “visual impact” and “idea conveyed” must remain the same.

Here are practical examples of what is valid and what is invalid under this rule:

Fonts (Typescript): VALID A series of the same word in different conventional scripts (e.g., Kaboozle in Times New Roman, Arial, and italics) is perfectly acceptable. INVALID A series that includes a “fanciful get-up” is not. The marks BLOKART and blo.kart were rejected as a series because the stylization of the second mark made it a different mark .

Spelling: VALID Minor or regional alternative spellings that do not change the sound or meaning are allowed, such as CENTRE-FUGUE and CENTER-FUGUE . INVALID A spelling change that alters the sound or idea is not. MIXCHANGER and MYXCHANGER were rejected as a series because they would be pronounced differently and convey different meanings (“mix changer” vs. “my exchanger”) .

Punctuation & Spacing: VALID Removing or adding simple punctuation or spaces is often acceptable if the identity is unchanged. BLACK POINT and BLACKPOINT are a valid series. MNOP and M.N.O.P are also valid. INVALID If the punctuation changes the meaning, the series is invalid. PALM-OLIVE and PALMO-LIVE are not a valid series because the hyphen placement in the second mark changes the “idea” and breaks the recognizable words “palm” and “olive”.

Adding a Logo (Device): INVALID (Almost Always) This is a major pitfall. Adding a logo or device to a word mark “in almost all cases, constitute a substantial alteration to its identity”. The application for WEB WORKS and WEB WORKS + (atom logo) was invalid because the atom device added a new conceptual element to the mark’s identity. VALID (Rarely) The only exception is if the device is “the simplest of conventional embellishments, contributing nothing of distinction,” such as a simple, non-distinctive border (e.g., FLORINA in a plain circle).

Company Names & Domain Suffixes: INVALID You cannot file a series for FLORINA and FLORINA LIMITED. The addition of the company designator substantially changes the mark’s identity. VALID (Sometimes) Variations in domain name suffixes (e.g., mybrand.com, mybrand.co.nz) may be accepted as a series, as these elements are generally non-distinctive.

Cartoon Characters: INVALID (Almost Always) This is one of the strictest tests. A series of different cartoon characters is not valid. Even a series of the same character in different poses or with different props is rarely allowed. The test is whether they are essentially the same character, in the same position, undertaking the same activity.

Why work with us?

When you engage our firm, we will review your brand variations against these exacting standards. If we find that your proposed series is invalid, we will advise you before filing.

This is critical because if IPONZ raises a series objection, the examination of your application on all other grounds (distinctiveness, conflicts with other marks) will stop until the series issue is fixed. This can add months of delay.

The examiner will often advise if a subset of your marks can be registered as a valid series. At this point, we will manage the entire response, which typically involves:

• Amending your application to proceed with the valid series.
• Dividing the non-compliant marks out of the main application and filing them as new, separate applications.

Our goal is to anticipate these objections. We provide the upfront strategic analysis to decide the most effective and economical way to protect your brand: whether that is a single, robust series application or a strategic set of separate filings.

A series application can be a powerful and cost-effective tool, but it is not a shortcut. It is a highly technical legal procedure. Before you file, contact our team for an assessment to ensure your application is built to succeed.