You already know how important it is to protect your brand by registering your trade mark, but do you know how a series of trade marks works?
When developing your brand, it’s entirely possible that you’ll play with different colourways, character cases, and include descriptions of the product. Under specific circumstances, you could get trade mark protection as a series.
The main benefit is that you only need one application, saving you time and application fees.
What is classed as a series of trade marks?
Before we go into that, a word of warning – the UK Intellectual Property Office (UKIPO) takes a strict approach to registering a series of trade marks. In fact, 40% of applications are declined.
To be acceptable, the series of marks should look the same, sound the same, and mean the same.
For example, it could be:
- The same word in different scripts or fonts
- Underlined, or not-underlined
- Differences in upper and lower case
- Differences in punctuation so long as it doesn’t change your mark’s meaning
- If colour is only a secondary feature of the mark, variations in colour may form a series
- Changes in spelling
- Colour or greyscale
The legal definition for a series of trade marks is:
“Trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.”
In layman’s terms, the variation can be in the non-distinctive features of each mark provided their visual, aural and conceptual identity remains largely the same.
What is the benefit of registering a series?
Before we look at the benefits, let’s take a look at the alternatives.
If you don’t register a series (assuming your application fits the strict UKIPO criteria), you can either file multiple applications for the different marks. Alternatively, you could register just one of the trade marks you’re planning on using.
The first will significantly increase your costs. You will have to pay for each application. However, if you register a series of more than two marks, the only additional fee is £50 per mark.
The second option will seriously affect your brand’s protection whereas a series application will give you broader protection for the many ways you will use your trade mark.
Is a series registration right for you?
Do you think a series registration is the best path for you?
As with all trade mark applications, getting it right is vital if you are to gain protection for your brand at minimal costs.
You’ll remember earlier we mentioned that the UKIPO rejects 40% of applications. How can you make sure you’re not one of those?
The best way is to seek the help of an experienced trade mark attorney. After all, it’s your business that’s at stake and the last thing you’ll want it for it is to be left unprotected. You’re also not going to be keen on forking out for multiple applications if your original one(s) goes wrong.
Before you go any further, get advice because it could save you time, money, and give your brand broader protection.
Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm.