Two provisions of the Trade Marks Act (Chapter 385) allow a registration to cover more than the simple case of one proprietor and one mark.
Section 31 — a series in one registration
Where a person who claims to be the proprietor of several trade marks for the same goods or for goods of the same description within a single class seeks to register them, and the marks — although they resemble each other in material particulars — differ in respect of:
(a) statements or representations as to the goods in respect of which they are used or proposed to be used; or
(b) statements or representations as to number, price, quality or names of places; or
(c) other matter which is not distinctive and does not substantially affect the identity of the marks; or
(d) colour,
— or in respect of any two or more of those matters — the marks may be registered as a series in one registration.
The controlling idea is in the words “resemble each other in material particulars” and “does not substantially affect the identity”. A series is one mark in several permitted variants, not several different marks bundled to save a fee.
| May vary | May not vary |
|---|---|
| Colour — para (d) | The distinctive word or device itself |
| Size, weight, quantity or price statements — para (b) | The essential feature of the mark |
| Place names appearing on the mark — para (b) | Anything that changes what the mark conveys |
| Descriptive statements about the goods — para (a) | The class — a series must be within one class |
| Other non-distinctive matter — para (c) | The proprietor — one proprietor for the whole series |
All the marks in a registered series shall be deemed to be, and shall be registered as, associated trade marks. Under section 29, associated marks are assignable or transmissible only as a whole and not separately. So a series cannot be broken up and sold off in parts — a point that matters when a business is restructured or a product line is divested.
Section 30(1) allows use of an associated registered mark, or of the mark with additions or alterations not substantially affecting its identity, to be accepted as the use required to be proved — which matters for non-use removal under section 14. And section 30(2) deems use of the whole of a registered mark to be use of any registered mark that forms part of it, registered in the same name.
The alternative to a series is separate applications for each variant — more fees, more renewals, and a separate opposition period for each. Where the variation is genuinely one of colour or of non-distinctive matter, the series is the efficient route. Where it is not, the Registrar will require separate applications.
Series and colour
Paragraph (d) interacts with section 18. Under section 18(2), a mark registered without limitation as to colour is deemed registered for all colours; under section 18(1), a mark limited to one or more colours has that limitation taken into account in deciding whether it is distinctive.
So there are three routes for a mark used in several colourways:
- Register without a colour limitation — the widest right, but the mark must be distinctive on its shape and wording alone.
- Register a series under section 31(1)(d) — the specific colourways, in one registration.
- Register a single colour-limited mark — narrowest, but sometimes the only way to establish distinctiveness.
Section 27 — jointly owned trade marks
Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled, as between himself and the other or others, to use the mark except —
(a) on behalf of both or all of them; or
(b) in relation to goods with which both or all of them are connected in the course of trade,
— those persons may be registered as joint proprietors, and the Act has effect in relation to their rights as if those rights were rights of a single person.
Subject to subsection (1), the Act does not authorize the registration as joint proprietors of two or more persons who use the trade mark independently, or propose so to use it.
That is the whole point of the section. Joint proprietorship is for a single trade source with more than one legal owner — a partnership, a joint venture selling a jointly produced product, co-owners of a family business. It is not a device for two independent businesses to share a mark. Where two businesses genuinely trade separately under the same or similar marks, the route is section 26 concurrent registration, with conditions and limitations defining each proprietor’s rights.
Practical consequences of joint ownership
- The Act treats the joint proprietors as one person. Applications, renewals, assignments and registered user applications are made by them together.
- An assignment needs all of them. Section 48(1) gives the registered proprietor power to assign and to give good discharges; where the proprietor is joint, that power is exercised jointly.
- Enforcement is joint. Infringement proceedings under section 56 are brought by the proprietors together, and one joint proprietor cannot sue the other under the registration.
- Put it in writing. The Act says nothing about how joint proprietors decide between themselves. A written agreement covering control of the mark, quality standards, who may license, how enforcement decisions are made and what happens if one wants out, is essential — and section 7 means the Register will not record it, because a notice of trust shall not be entered.
- Plan the exit. If the venture ends, whoever is left holding the mark must be identified in advance — otherwise the outcome is a section 25 rival claim, with the Registrar refusing everyone until the Court decides.
Where one party owns the mark and another needs to use it, the cleaner structure is a single proprietor plus a registered user under Part IX. Section 69(1) deems permitted use to be use by the registered proprietor, so the licensee’s use protects the registration against non-use — and section 17(3) lets the licensee’s pre-application use count towards distinctiveness.
Sources
- Trade Marks Act (Chapter 385) — ss 7, 14, 17, 18, 25–31, 48, 56, 69
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.