3.9 Variation clauses

Regulation 48 of the Regulations states:

1. The Commissioner may register a trade mark that includes the name or description of goods and services for those and other goods and services, if the name or description may vary in use
2. The Commissioner must require the applicant to undertake that the name or description will be varied if used for goods and services covered by the specification that are not the named or described goods and services
3. The undertaking must be entered on the register
4. If the applicant does not give an undertaking as required, the Commissioner may refuse to register the trade mark for goods and services that are not the named or described goods and services

Therefore, where an application to register a trade mark contains a specification of goods and services that is wider than those in the specification, the Commissioner must require a variation clause to be inserted.

For example, an applicant might apply to register the mark PALLISER’S BLACKCURRANT JELLY in respect of “jellies, jams and preserves”. The applicant will be asked to limit the specification of goods or services for their application to those goods or services named within the mark (in this example, blackcurrant jelly).

Alternatively the applicant may provide an undertaking that the mark will be varied if used for goods and services covered by the specification that are not the goods named within the mark. Using the example above, the applicant could provide an undertaking that the mark will be varied if used for varieties of jelly, jams or preserves other than blackcurrant jelly.

The applicant undertakes that in use in relation to foods other than blackcurrant jelly the mark will be varied by the substitution of the description of such food for the words "blackcurrant jelly".

Other examples include in class 32 for the class heading:

The applicant undertakes that in use in relation to beverages other than beer the mark will be varied by the substitution of the description of such beverages for the words "lager beer".