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5. Other matters of a non-distinctive character

In order to qualify as a series under subsection (iii) of the definition of “series of trade marks” in section 5 of the Act, the marks in an application must:

Resemble each other in their material particulars, and
Differ only in respect of other matters of a non-distinctive character that do not substantially affect the identity of the trade mark.

It is essential that the differences do not substantially affect the identity of the trade mark. The meaning of “not substantially affecting the identity of the trade mark” was discussed in Nutrogena v Golden Limited [1996] RPC 473, at 488-489, where Jacob J observed:

‘Not substantially affecting its identity’ means what it says, both in this section and in other sections of the Act (e.g. section 35). An alteration which affects the way a mark is or may be pronounced, or its visual impact or the idea conveyed by the mark cannot satisfy the test.

Therefore the differences must not substantially affect the identity of the marks.

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5. Other matters of a non-distinctive character

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