The UKIPO is abolishing the registration of UK series marks. #
This marks a significant shift for trade mark applicants, who will no longer be able to protect multiple variations of a mark within a single application, and reflects the UKIPO’s aim to reduce administrative burdens and align more closely with international practice.
What are UK series trade marks and how do they work? #
A UK series trade mark application permits an applicant to protect up to six marks within one application, provided the marks differ only in non-distinctive matter, and their essential features do not substantially affect the overall identity of the mark. For example, an applicant may wish to file for the same logo in a variety of colours, different fonts, or perhaps use different punctuation in one/some marks and not others.
Series marks are quite unique in that most trade mark offices around the world do not recognise them. In addition to the UK, there are some countries that do recognise series applications, including Australia, Bangladesh, Hong Kong, India, Ireland, Malaysia, New Zealand, Pakistan, and Singapore.
The latter countries are all maintaining their series marks system; however, the UKIPO is set to abolish the filing of series marks very shortly. No exact date has been given as to when it will no longer be possible to file a UK series trade mark application, however it is anticipated that this will be in the next 17 months or so.
Why applicants have valued series trade marks #
Many applicants appreciate the value of filing a UK series trade mark application in that you only have to pay one application fee of £170 to cover up to two marks in the first class, with an additional £50 for each extra mark thereafter (adding in additional classes of goods/services also means further class fees). It also saves on renewal fees too, in that you only file one renewal request. Having one trade mark registration certificate covering the different variants of the marks also makes life easier in terms of easing administrative burdens.
The UKIPO has made the decision to maintain all registered series marks, and as such, proprietors will not need to re-register the other marks in the series beyond the first as separate trade marks. If any series trade mark applications are filed prior to the UKIPO abolishing series marks, they will also examine these as they have done before.
Why the UKIPO is abolishing series trade mark applications #
The reason for the UKIPO abolishing the series trade mark application is because applicants could get confused when filing a series trade mark application themselves, and as such, many include marks in the application that did not constitute a series. The UKIPO would then have to raise objections to those marks, and this would cause an administrative burden on trade mark examiners.
Some applicants were also including marks within a series to obtain an examiner’s opinion on the distinctiveness of a mark to save them the filing fees of further trade mark applications. Other issues have included where a UK registered series mark is over 5 years old following its registration and a cancellation action for non-use has been filed against it. In that case, if the proprietor was not using all the marks in the series, then the UKIPO may have to delete one or more of the marks from the series to reflect the actual use of the mark. This again was putting extra administrative burdens on the UKIPO.
Many trade mark offices, other than those set out above, do not recognise series marks and this was also causing issues. For example, if an applicant wanted to base an international trade mark application on a UK series marks, the applicant would need to make it clear as to which mark in the series they were relying upon (they can only choose one mark per international application). If this was not made clear it would lead to delays and cause extra work for the examiner, having to raise objections.
Another example is if an applicant was claiming priority from a UK series trade mark when filing in another country, an examiner in that other country might not understand as to which mark the applicant is claiming priority from. Again, this would lead to objections and burdens on examiners outside of the UK.
The UKIPO is therefore bringing itself in line with most trade mark offices around the world that do not recognise series applications. This means that moving forward, for each variant of the mark you wish to protect, you will need to file a separate trade mark application for it.
How the abolition of UK series marks affects trade mark strategy #
The abolition of series marks in the UK, therefore, means that you will need to give careful thought to the mark you wish to protect and whether you wish to protect more than one variation of the mark by filing a separate trade mark application for it. This will affect filing strategy and budgets.
It may also require businesses to prioritise which versions of a mark offer the strongest commercial value and are most likely to be used in practice. Applicants should review their existing portfolios and any upcoming branding changes, as early planning can help ensure that protection remains both comprehensive and cost-effective.
Next steps: filing UK trade mark applications before the deadline #
If you know you may wish to protect more than one version of your mark it would be prudent to get in touch with us to discuss whether filing a UK series trade mark application now might be prudent and cost-effective ahead of the UKIPO abolishing them altogether.
