5. Restrict to Accord

Date Published

Series applications can be filed for a wide range of goods/services within a single class, or across multiple classes (Section 27).  The nature of the goods/services claimed in these class/es may have a bearing on the validity of the series claim.

In deciding whether the material particulars of the trade marks in a claimed series resemble each other, it is important to consider the nature of the goods/services to which the trade marks are to be applied.  For example, the trade marks IDAK TV and IDAK TELEVISION would represent a series in classes 9 and 38 if the goods and services claimed were items such as “televisions” and “television broadcasting”.  In this example,  the words TV and TELEVISION are statements as to the goods and services as provided for under paragraph 51(1)(a).  However, the same could not be said if the goods also included items with which the words TV or TELEVISION had no connection, such as “fire extinguishers” or “facsimile transmission services”.  Then the differences between the trade marks, namely the words TV and TELEVISION, would not be statements as to those goods or services.  It should also be noted that if the trade marks were to be used on fire extinguishers or facsimile services, the difference between IDAK TV and IDAK TELEVISION would be a substantial variation in material particulars.

This type of consideration is highly likely to be relevant to many multiclass series applications because they provide the greatest potential for an applicant to claim a diverse range of goods and services.  Such diversity reduces the likelihood of a valid series application where the trade marks differ in statements as to the goods or services.  In such cases, applicants will usually have to amend their goods or services to conform to the description within the trade marks in order to satisfy section 51.