UKIPO to discontinue series trade mark applications
Series trade marks were first introduced in the UK under the Trade Marks Act 1938. They are a cost-effective way of obtaining registered trade mark protection for up to six variations of the same mark, for example the same logo in six different colour variations. The cost of adding a mark to a series application is significantly cheaper than filing multiple, separate applications for each individual representation. It also saves on renewal fees, which are due every ten years after registration, as only a single registration will need to be renewed.
Earlier this year, the UK Intellectual Property Office (UKIPO) announced the results of a consultation it ran from August 2023 to October 2023. A key outcome was the decision to discontinue the ability to file a series trade mark application. The reason for this is two-fold. First, a large proportion of series applications filed in 2022, particularly by unrepresented applicants, were objected to and the government therefore took the view that it was important to simplify the filing process. As the UKIPO will not refund an applicant if the application is rejected because it does not meet the statutory requirements for registration, the government is concerned that applicants who do not obtain professional advice may be at a financial disadvantage when making these filings. The time it takes to process these non-compliant applications also has an impact on the UKIPO’s resources. Second, series trade marks are fairly unique to the UK’s trade mark regime as many foreign jurisdictions do not offer a similar service. It is therefore suggested that the change would bring the UK into line with international trade mark systems. Ultimately, the government wanted to balance the benefit provided by series applications against the benefit of simplifying the UK trade mark filing system.
Owners of existing series trade mark registrations will be pleased to hear that their registrations shall remain valid.
Preparing for this change
Whether you have an existing brand, new brand, or are considering a rebrand, you should seriously consider taking advantage of the ability to file a series trade mark application before it is too late. If you are unsure whether a series trade mark would be of benefit to you, now is a good time to take stock and obtain expert advice on whether it would be prudent to file sooner rather than later.
If you have questions or concerns about trade mark applications, please contact Will Sander or Jennifer Stratfold.