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

Trade Marks Act 1995

Trade Mark Regulations 1995

Section 51 requires that both requirements discussed above be met for a series application to be valid.

In applying these requirements, 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) - this is 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) - this is 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:  

    

   a. The trade marks differ in none of the ways specified in paragraphs 51(1)(a),(b), and (c) - this is an invalid series.  

    

   OR

    

   b. 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. That is, they do not differ only in the allowable ways - this is an invalid series. 

    

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

• IDAK

• 

may resemble each other in material particulars, but would 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).

Applications for a series of trade marks that consist of non-traditional signs must be assessed on their merits, and should not be treated differently to traditional signs. However, signs such as sound, shape or colour per se, may often not qualify under section 51(1). For example:

• if the trade marks consist only of colours, then differences in colour may mean the trade marks do not resemble each other in material particulars, since colour is an identifying feature of each mark in the series.

• a series of non-traditional signs without words will often differ in ways not allowed by paragraphs 51(1)(a), (b) or (c). For example, a series of sound trade marks for variations on a piano melody would differ in ways not specified in paragraph 51(1).

However, the following are examples of non-traditional signs that only differ in ways specified in paragraphs 51(1)(a), (b) or (c)paragraphs 51(1)(a), (b) and (c):

• a series consisting of the same bottle shape but with a different number having a descriptive function (e.g. a year of production).  

• a series consisting of shape trade marks where each is presented in a non-distinctive colour scheme.