13.5. Paragraph 51(1)(a) Statements or Representations as to Goods or Services

Trade Marks Act 1995

Trade Mark Regulations 1995

Paragraph 51(1)(a) allows trade marks to differ by “statements or representations as to the goods or services in relation to which the trade marks are used or intended to be used”.

To qualify under paragraph 51(1)(a), the relevant part of a trade mark:

• Must clearly be a statement or representation about the goods/services. This will usually be something descriptive, but need not rise to the level of ‘directly descriptive’.

   

  Example 1. IDAK; IDAK CAFÉ, on Class 30: coffee beverages, is a valid series. CAFÉ is a representation as to the goods (i.e. that the goods originate from a CAFÉ or are of CAFÉ quality).

   

  Example 2. IDAK; IDAK ORBITAL, on Class 44: medical services, is an invalid series. Even though ORBITAL can have medical relevance (e.g. ‘orbital bone’), the word alone does not clearly say or represent anything about medical services.

   

• Must relate to at least one of the goods/services claimed in the application.

   

  Example 3. IDAK SHIRTS; IDAK MORTGAGE, on Class 25: clothing and Class 36: financial services, is a valid series. SHIRTS and MORTGAGE are each a statement about at least one of the claimed goods/services. The fact that SHIRTS does not describe financial services does not render the series invalid.

   

Example 4. IDAK SHIRTS; IDAK MORTGAGE, on Class 25: clothing only, is an invalid series. MORTGAGE is not a statement about any claimed goods.