When it comes to trade marks, there might be instances where you need to submit multiple trade marks at once, especially if you want to protect different variations of your brand. Series marks offer a cost-effective way of doing this, allowing you to register multiple related marks within a single application.
In this article, our trade mark lawyers discuss what series trade marks are, their benefits, requirements, and the application process for UK series marks.
Contents:
- What is a series trade mark?
- What are the benefits of registering a series trade mark?
- What are the requirements for a series trade mark application?
- Can a series trade mark include word marks and logos?
- Can I file a series trade mark for different classes of goods or services?
- How much does a series trade mark cost?
- Can I add new marks to an existing series trade mark?
- How do I apply for a series trade mark?
- How long does it take to register a series trade mark?
- What are common reasons for rejecting a series trade mark application?
- What happens if my series trade mark is rejected?
- Can I license or assign individual marks within a series trade mark?
- Summary
What is a series trade mark?
A series of trade marks is any number of up to six marks filed in a single application, provided that they meet the requirements to be accepted as a series.
What are the benefits of registering a series trade mark?
The benefits are that you can protect several variations of the same mark that you may want to use, without having to register each separately, saving on application and renewal fees.
What are the requirements for a series trade mark application?
To be accepted as a series, the marks must only differ in non-distinctive aspects that do not substantially affect the identity of the trade mark.
This means that the marks must:
- Look the same
- Sound the same
- Mean the same
So purely descriptive or generic words in a mark can be changed, provided the main brand identified stays the same, or a simple numerical element or model number can differ provided the remainder of the mark is more distinctive and remains the same.
The following examples show how the non-distinctive aspects of a mark can be changed provided that the distinctive components stay the same.
Acceptable series marks:
- MARVIN1
- MARVIN2
- MARVIN3
- Xerox Copier
- Xerox Laser
- Xerox Multipurpose
Here, the main brand identifiers, Marvin and Xerox, are the most dominant and distinctive components so the proceeding, descriptive words can be varied without the character of the marks being substantially affected.
Not acceptable as series marks:
- CH101
- CH102
- CH103
- POWER LAWN MOWERS
- POWER GARDEN KIT
The letters, CH and the word POWER are not distinctive enough on their own to enable the proceeding component to be changed without affecting the identity of the marks as a whole.
The goods and services that the mark is intended to be registered for may have a bearing on whether the variations are acceptable as a series. For example, the series;
- BOUNCE COSTA BRAVA
- BOUNCE CALIFORNIA
- BOUNCE CANCUN
It would be acceptable for travel agency services but not for eggs since the geographical names have no connection with eggs so they are distinctive in respect of them but are not distinctive as holiday destinations for a travel agency.
Bilingual variations may be acceptable in the UK if there is a territorial limitation restricting rights in the non-English version to the territory in which it is understood, e.g. Wales if the non-English version of the mark is in Welsh.
The IPO states that around 40% of series applications don’t meet these requirements. So it is worthwhile obtaining advice from a trade mark lawyer beforehand so that your series application has the best chance of success.
Can a series trade mark include word marks and logos?
No, but minor differences in stylisation or configuration, such as a square box around the text, may be acceptable.
Can I file a series trade mark for different classes of goods or services?
The goods and services must be the same.
How much does a series trade mark cost?
A series trade mark costs the same as a standard trade mark plus a £50 additional fee for each mark in the series over and above two marks. So, the cost to file an application for a series of four marks in one Class of goods/services filed online would be £170 for two marks out of the series in one Class plus £100 for the two additional marks in the series.
Can I add new marks to an existing series trade mark?
You cannot add marks to an existing series mark. Once an application has been filed at the UK IPO then the mark itself cannot be amended. You would have to file a new application for the new marks in the series.
How do I apply for a series trade mark?
You should conduct trade mark clearance searches to understand if your chosen mark is free to use and register. Trade mark lawyers can conduct searches of the Trade mark Register for prior similar registered marks and advise you of the level of risk that these entail to your application. You can also conduct Google searches and other investigations into competitors and other similar businesses to check that no-one is using a similar trade mark in practice. This is because unregistered trade mark owners can still oppose a trade mark application if they have prior goodwill in the same or a similar mark as they have been using it in business before you.
A series trade mark application is filed at the UKIPO in the same way as a standard trademark application, by filing a TM3 form and paying the application fee, plus the additional series fee if there are more than two marks in the series.
The Intellectual Property Office will then examine the application to see if it meets the requirements of the Trade Marks Act. This will include checking that each of the marks in the application can be accepted as part of the series. The Examiner will also conduct a search of the Trade mark Register to see if there are any prior similar marks already registered. You will then be issued with an Examination Report, informing you of the outcome of the examination and of any objections that the Examiner has raised. You may be able to remedy an objection by changing the wording of your specification or by offering to remove one or more of the marks in the series or by filing submissions and evidence to argue against the objection.
The Examiner will also inform you of the prior similar marks that they have found and that they intend to write to these mark owners to let them know about your application and to give them the opportunity to file an opposition against it.
Once any objections have been dealt with, your application will be published for opposition purposes. This is a two month period, which can be extended to three by the filing of a threatened opposition notice, during which time third parties can file an opposition to your application. Usually, oppositions are filed by prior mark owners who feel that their trade mark is too similar to yours.
You will have the chance to try to negotiate a compromise or settlement arrangement with any opponents, perhaps by offering to limit the goods and services to be covered by your application. If this fails, you can choose to file a defence and evidence to support your case and have the matter decided by the tribunal. Or, you can withdraw your application and consider filing a new application for an amended mark that is not confusingly similar to the opponent’s mark.
Once any oppositions have been dealt with, your trade mark will either proceed to registration for some or all of the goods and services that you applied for or if the opposition was decided against you, it will fail in full or in part.
How long does it take to register a series trade mark?
Series marks are examined and published in the same way as a standard registered trade mark. It takes around 5-6 months’ for a trade mark to be registered if all goes smoothly and there are no objections or oppositions. If there is an objection by the Examiner, you will normally be given two months’ in which to file a response. You can then ask for further time in which to file evidence of acquired distinctiveness or arrange a telephone hearing with a senior officer of the Registry, if your original submissions were still refused.
In an opposition is filed against your application, you will initially have a two-month ‘cooling off period’ in which to try to negotiate a compromise with the opponent. This ‘cooling off period’ can be extended by consent of both parties by up to a maximum of eighteen months in total. Either party can terminate the cooling off period at any time. Once the cooling off period has ended, the proceedings and evidence rounds can take around eight months to conclude and then a hearing may be scheduled or there may be a decision from the papers. The whole process can take as long as a year or more to reach a judgment, depending on the number of evidence rounds and whether there is any delay at the IPO in scheduling hearings.
What are common reasons for rejecting a series trade mark application?
A series mark will be rejected if the mark included differs in more than non-distinctive immaterial ways. If this is the case, the Examiner will issue a series objection. This can be issued immediately before the full Examination Report is issued if the Examiner would have to conduct more than one search to cover all the marks in the series. Or, the series objection could be included in the main Examination Report if it has been possible to conduct one search for all the marks. The series objection will normally require the applicant to elect to remove one or more of the marks in the series and proceed with the remainder.
If one or more of the marks in the series do not satisfy the requirement of the Trade Marks Act, the Examiner will recommend that these marks be removed. If all the marks satisfy the requirements of the Act but do not constitute a series, the applicant can choose which to remove, provided the remainder form a proper series or there is only one mark left in the application.
What happens if my series trade mark is rejected?
If none of the marks applied for in the series meet the requirements of the Act, then the applicant may be able to submit arguments in favour of registration or to file evidence of acquired distinctiveness through the use of one or more of the marks in the series.
If these options fail, it may be necessary to file a new trade mark application for an amended mark or series of marks that meets the requirements of the Act.
Or, if the application failed because of an opposition from another prior trade mark owner, the applicant may be able to negotiate a compromise or co-existence arrangement with the opponent.
Renewal
The renewal process is the same as for a standard trade mark. A series mark must be renewed every ten years. One difference is that you may not want to renew the registration for every mark in the series. You can indicate which marks in the series you want to renew and then any others will expire and be deleted from the series mark registration.
Can I license or assign individual marks within a series trade mark?
A series mark is essentially one registered trade mark so the separate marks in the series cannot be assigned individually. You can license use of the separate marks by way of a licensing agreement, which should describe how the licensed mark is to be used and in what format.
Summary
Being able to file a series of trade marks is a useful aspect of the UK Trade Marks system. It can be a cost effective way of protecting a brand that has different product ranges or serial numbers.
The requirements to satisfy the definition of a series can be complicated and nuanced so professional advice should be sought before filing the application or any potential cost saving by filing as a series may be lost if the application fails in its entirety or extra legal fees are incurred in overcoming objections.
