5. Other matters of a non-distinctive characterUp one level
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  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.
- 5.1 Marks represented in different styles or fonts
- 5.2 Differences in spelling
- 5.3 Conjoining words
- 5.4 Marks that appear to be plural/singulars of each other
- 5.5 Marks that differ due to punctuation
- 5.6 Marks represented with differences in upper and lower case
- 5.7 Marks with different linking elements
- 5.8 Marks that contain different or additional device material
- 5.9 Marks that differ in respect of letters
- 5.10 Domain names
- 5.11 Marks that contain additional company name material
- 5.12 Marks that differ due to language
- 5.13 Applications in respect of several cartoon characters