Tue 14th Nov 2023
What can be registered as a series trade mark in the UK?
One of the money- saving “tricks of the trade” of the UK trade mark registration system is protecting a series of trade marks in a single application. This can save application and renewal costs and make your portfolio easier to manage.
Registering a series of trade marks in one application can save time and costs.
One of the money- saving “tricks of the trade” of the UK trade mark registration system is protecting a series of trade marks in a single application. This can save application and renewal costs and make your portfolio easier to manage. In certain circumstances, the UK IPO will allow several trade marks in one application, provided they are substantially the same, with only minor variations.
We recommend the use of series trade marks to save costs in certain circumstances, particularly black and white and colour images of certain brands, conjoined words and cartoon characters. Your legal rights in a registration will extend to similar trade marks so it may not be essential to protect every variation.
James Cornish, Trade Mark Attorney explains more.
When does a trade mark fall within the same series?
A trade mark may fall within the same series, if the marks resemble each other in their material particulars, including their distinctive features. The differences will not be regarded as having distinctive character in themselves, and the differences when assessed in the context of the overall trade mark do not substantially affect the identity of the brand. This means that not all confusingly similar trade marks are capable of falling in the same series and the differences generally need to be very small.
It can be more cost effective to include a series of marks in one application
There is no additional fee for including a second mark in the same application, and each additional mark thereafter costs £50. This is much cheaper than filing 6 UK national trade mark applications.
The extra marks should be included in the application on filing and the UK IPO Examiner will assess whether it is a series. If the Examiner concludes that it is not a valid series, you have the opportunity to dispute the issue by telephone, letter or hearing.
Ten examples of possible trade mark series capable of registration
Each case will turn on its own facts
1. Series of common numbers
Where used as a reference number such as Page White 1, Page White 2, Page White 3, Page White 4, Page White 5.
The numbers should not be distinctive in their own right.
2. Common misspellings
It may be possible to include US English and British English spellings in the same series such as Page White Colour Centre, Page White Color Centre.
Oral identity is not conclusive and any distinctiveness in the misspelling is likely to mean it cannot fall in the same series.
3. Adding House Marks
If the distinctiveness is all in the house mark, it may be possible to include a few brands in the same application, where the extra element is wholly descriptive such as Page White Lawn Mowers, Page White Mowers.
4. Slight changes in stylisation such as very minor punctuation
This may be considered insufficiently significant, enabling it to be included in the same series
The UK IPO is however more likely to say that the stylisation does affect distinctiveness.
5. Positioning of distinctive features.
Vertical lettering and also horizontal lettering of the same words may amount to a series application. The distinctiveness is in the words, not in the positioning, depending on the overall mark and the size of the letters.
6. Colour of the distinctive elements
Having a word mark, or logo mark on a colour background, and also on a black background is a popular form of series application. The colour element should be non-distinctive. We have filed numerous series applications, where one mark is a black and white image of a colour trade mark.
7. Domain names
A series of marks comprising distinctive wordmarks, followed by differing domain name suffixes, such as pagewhite.co.uk and pagewhite.com. In practice it is generally advisable to omit non distinctive matter, such as domain name suffixes, from the mark you register.
8. Geographical elements
Having a descriptive geographical element may not be significant. Page White London, Page White Leeds, Page White Bristol may be seen as a series on the basis that the city names are non-distinctive. It is likely to depend on what the services are; if the city name has no reputation for the relevant services, then the city name is distinctive and refusal as a series is more likely.
9. Conjoined word.
Another popular form of series is where words are joined together, or separated such as PageWhite and Page White. The trade marks both consist of recognisable words, so having them as separate words, and with a capital W could mean that they are a series.
10. Cartoon characters and logos of characters.
This is particularly useful as you can include 6 images potentially. The character images would need to be very close so not holding different objects or wearing different clothing.
For more information on protecting a series of trade marks, please contact James Cornish.