Trade mark law is designed to strike a balance between protecting brand identity and ensuring that the register remains clear and workable. One of the unique features of Australian law in this respect is the ability to register a series of trade marks under section 51 of the Trade Marks Act 1995 (Cth). This mechanism allows a brand owner to file a single application for two or more marks that are essentially the same, differing only in limited and prescribed ways. While the provision offers practical efficiencies, it also imposes strict limitations that applicants must navigate carefully.
What constitutes a valid series?
Section 51 sets out two considerations in determining the validity of a series application. First, the marks must resemble each other in material particulars, i.e. in other words, their essential identifying features must be the same, and any differences should not substantially affect their identity. Second, the marks may only differ in one or more of the ways expressly permitted under section 51(1)(a), (b) or (c), i.e. differences in statements or representations as to the goods or services, differences in statements as to number, price, quality or names of places, or differences in the colour of any part of the trade mark.
If these requirements are met, the Registrar is obliged to register the marks as a series in one registration. If not, the application will fail.
Resemblance of material particulars
The idea of “material particulars” refers to the key distinctive elements of a mark. In many cases, this will be the distinctive word, logo, or device that makes the mark recognizable. However, non-distinctive or descriptive matter can still form part of the material particulars if it dominates the overall impression of the mark. For example, if a descriptive word is rendered in large stylized lettering, it may become part of the material particulars. When comparing marks in a series, the test is whether the differences between them affect their overall identity. If the answer is yes, they cannot be registered as a series even if they share a common element.
Permitted differences under Section 51(1)
The second step is to consider whether the marks differ only in the narrow ways permitted under the legislation. Section 51(1) provides three categories of acceptable differences as mentioned before.
Under paragraph (a), marks may differ in statements relating to the goods or services. For example, “IDAK CLOTHING”, “IDAK FOOTWEAR”, and “IDAK HEADGEAR” for class 25 would form a valid series.
Under paragraph (b), differences relating to number, price, quality or place names are permitted. Variants like “IDAK 1” and “IDAK 2”, or “IDAK GOLD” and “IDAK SILVER” for hotel services, are acceptable examples.
Under paragraph (c), differences in colour are also permitted, such as one version of a logo in black and another with a red element.
So long as the only differences fall within these categories, the application will usually succeed. If the marks also incorporate other variations, such as changes in spelling, punctuation, or word order, they will fall outside the scope of a valid series.
What is considered invalid as Series registration?
The strictness of the provision means many attempted series fail. For instance, “IDAKS” and “IDAKZ” resemble each other in material particulars but differ in spelling, which is not one of the permitted differences. Similarly, marks like “IDAK VIEW” and “IDAKVIEW” are considered materially different. Even subtle changes, such as altering the order of words (“IDAK PERTH” and “PERTH IDAK”) or changing case (“IDAK CLOTHING” and “idak FOOTWEAR”), can render a series invalid. These examples highlight how carefully an applicant must draft specifications to remain within the narrow confines of section 51.
Non-traditional marks and series applications
Applications for non-traditional marks such as sounds, shapes, or colours face particular difficulties. Variations in these features often change the material particulars and cannot be captured by the limited scope of section 51(1). For instance, different versions of a sound mark or different shades of a colour mark are unlikely to form a valid series. That said, composite marks that combine a non-traditional element with a word may still qualify if the only differences relate to goods, services, number, quality, place, or colour.
Multiclass applications
Section 27 of the Act allows series applications across multiple classes. However, the broader the range of goods and services, the greater the chance that the claimed differences will not qualify under section 51. For example, “IDAK TV” and “IDAK TELEVISION” may form a valid series for televisions and broadcasting services, but not for goods like fire extinguishers, where the words “TV” or “TELEVISION” have no connection to the goods. Applicants must ensure that the variations are genuinely statements as to the goods or services claimed, otherwise the application may fail.
Consolidation and linking under Section 51A
Section 51A, introduced in 2007, provides a mechanism for consolidating earlier series applications filed on the same day across different classes by the same owner. Where the marks are identical, the Registrar can treat them as a single application covering all relevant goods and services. This provision addressed practical difficulties faced by applicants who had previously filed duplicate series applications.
Colour endorsements
Previously, applicants seeking protection for a series differing in colour were required to provide specific endorsements describing the colours. This practice has now been abandoned, although where a colour endorsement restricts the scope of protection, it cannot simply be deleted. Instead, it must be carefully drafted to reflect the applicant’s intentions without overextending the claim.
Conclusion
Series applications can be a valuable tool for businesses seeking efficient protection for variations of a core brand. They can reduce costs and streamline the registration process. However, the restrictions in section 51 are narrow, and many proposed series fall outside its scope. Applicants should approach series filings with care, ensuring that the variations fall squarely within the categories allowed and that the marks still resemble each other in material particulars. In practice, this often means seeking professional advice before filing. For businesses, the reward of a valid series registration is clarity, efficiency, and a stronger footing in enforcing trade mark rights. That too, across multiple variations of their brand.
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