Series trade mark applications in the UK: what is changing and what it means for brand owners
The UK trade mark system is set to undergo a significant change following confirmation from the UK Intellectual Property Office (UKIPO) that series trade mark applications will be phased out. No official date has been announced, but the change is expected to take effect in the near future.
As this will change the way that brand owners protect different versions of their trade marks, it is important to understand what this means in practice and how it may affect your future filing strategies.
What are series applications?
A series application allows up to six versions of a trade mark to be registered within a single filing, providing that the marks share the same essential characteristics and differ only in minor, non-distinctive details such as colour or layout.
For many brand owners, series applications have offered an efficient and cost-effective way to protect slight variations of a mark without filing a separate application for each version.
Why is the UKIPO phasing out series applications?
One of the key reasons for the change is to simplify the UK trade mark system. The current system is complex and can be difficult for applicants to navigate. As a result, series applications receive a high level of procedural objections, which can increase costs and delay registration. Series applications also create inefficiencies for examiners, leading to an increased workload and delays across the system.
A further significant reason is to bring the trade mark system closer in line with international practice. In most trade mark offices around the world, a separate application for each variation of a mark must be filed. This can create difficulties for UK brand owners seeking global protection, particularly when claiming priority or filing international applications in territories where only one mark can be relied upon.
What does this mean for trade mark owners?
Existing series registrations will remain valid and enforceable, and renewals will continue under the current system. However, no new variations can be added to existing registrations.
Once the changes have taken effect, each version of a mark will require a separate application. This change will have cost implications, as multiple applications inevitably means multiple filing and renewal fees, as well as greater administrative oversight. As a result, brand owners will need to make strategic decisions about which versions of a mark to protect.
Practical considerations
It is important for brand owners to take steps now to prepare for the transition. Reviewing plans for upcoming trade mark applications will help to identify cases where it may still be possible to file a series application under the existing system. For brand owners currently using the series system, or planning to do so, series applications remain available and will continue to be examined under the current rules. Alternatively, brand owners may reconsider whether protecting multiple variations of a mark is necessary, or whether adopting a more consistent portfolio could simplify enforcement and reduce costs.
By reviewing existing portfolios, assessing how branding is used in practice and budgeting for separate applications where necessary, brand owners can adapt to the new to the new system and continue to protect their brands effectively.
If you would like to discuss how this change affects your trade mark portfolio or the best strategy moving forward, please get in touch with our Trade Mark team.
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