Are series mark applications being removed from the UK trade mark system?
Yes. The UK Intellectual Property Office (IPO) has announced that the option to file series mark applications will be removed as part of its new digital trade mark service.
What this means for brand owners
This means that, once the change takes effect, brand owners will no longer be able to protect up to six very similar marks in a single UK application. Existing registered series marks will remain on the register, but new series filings will no longer be possible once the new service launches.
This article explains what series mark applications are and considers the implications of the IPO’s decision in terms of UK trade mark filing strategy.
What is a series mark application?
A UK series mark application allows an applicant to file up to six very similar marks in a single application.
This has been proven to be popular because:
- It simplifies portfolio management, with multiple acceptable variants covered by one registration for renewals and recordals;
- It helps where branding appears in slightly different forms across packaging, websites or marketing materials, for example differences in colour, punctuation, capitalisation or spacing; and
- It can reduce filing and renewal costs. The official fee for a series mark application comprising six marks is £385, compared with £1,230 for six separate applications.
What will be accepted?
The legal test is in section 41(2) of the Trade Marks Act 1994. The marks must resemble each other in their material particulars and differ only in non-distinctive ways that do not substantially affect their identity.
In practice, the marks must keep the same essential features. Any differences must be minor and must not change the overall impression.
If the IPO objects to the series mark application on the ground that the marks are too different, one or more marks may need to be removed. Those removed marks can be refiled separately, but they will receive a later filing date.
What is changing?
The IPO has confirmed that new series mark applications will be withdrawn as part of its wider transformation programme. The change will take effect when the new digital trade mark service goes live. At the time of writing, the IPO has not confirmed when that will be.
The IPO’s justification for the change is that series marks add complexity, are often misunderstood and do not fit neatly with a streamlined digital filing system. It has also pointed to the number of objections, especially in unrepresented filings.
Series marks are also unusual internationally, as most trade mark systems require separate applications for separate marks. Removing the option brings the UK closer to that approach and, in the IPO’s view, makes the system clearer.
That said, the change is significant for brand owners who have used series filings to manage costs and protect minor variants.
Takeaways
Series mark applications have offered a cost-effective way to protect minor variants of the same branding in a single UK filing. The question now is which versions of a mark need separate protection. In some cases, one core registration may be enough. In others, separate filings for colour, black-and-white or stylised versions may be worth the extra cost.
If in doubt, our advice is to file series mark applications as soon as possible and we would be pleased to advise further on this.