4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)

Date Published

Section 51 requires that both considerations mentioned above be made to determine the validity of a series application.  In doing so, there are three possible outcomes.

  1. The material particulars resemble each other and the trade marks differ only in the ways specified in paragraphs 51(1)(a),(b),(c) (ie a valid series).
  2. The material particulars do not resemble each other and the trade marks differ only in the ways specified in paragraphs 51(1)(a),(b),(c) (ie an invalid series).
  3. The material particulars resemble each other but the trade marks do not differ only in the ways specified in paragraphs 51(1)(a),(b),(c).  There are two variations of this possible outcome:  Firstly, the trade marks differ in ways not specified in provisions of paragraphs 51(1)(a),(b),(c).  Secondly, the trade marks differ in one or more of the ways specified in paragraphs 51(1)(a),(b),(c), but also incorporate a further change. (ie an invalid series).

By way of example, trade marks can resemble each other in material particulars in combinations such as:

But, they do not qualify as a series because the ways in which they differ are not specified in any of paragraphs 51(1)(a), (b) or (c).  

Similarly, applications filed for a series of non-traditional signs, such as variations of a sound trade mark, variations of a shape trade mark or a colour trade mark, do not qualify under these provisions.  Differences in the sound/shape/colour of these trade marks may impact on the material particulars of these trade marks and may prevent them from resembling each other.  It should also be noted that such differences in these trade marks may not comply with the differences specified by paragraphs 51(1)(a), (b) and (c).  However, a composite trade mark consisting of a non-traditional sign and a word may form a valid series provided the only differences between the trade marks are those specified by paragraphs 51(1)(a), (b) and (c).