30 November 2023

Series of marks – enjoy them while they last?

In April 2021, the UK Intellectual Property Office (“IPO”) launched a review of its digital services, aiming to transform its services for the digital age. The focus is on creating a single integrated system for all registered intellectual property, enabling users to apply for and manage their intellectual property rights in a one-stop-shop system.

A first consultation was carried out from November 2022 to January 2023 and concentrated on improvements to patent services. The second consultation, which closed on 31 October 2023, invited comments on trade marks, designs, mediation and other matters. One of the topics of the consultation was “series of marks”, with the IPO seeking to review their value and either reduce the number of marks that can constitute a series or abolish them altogether.

The United Kingdom is one of the very few jurisdictions that allows for the registration of a series of marks. Under Section 41(2) of the Trade Marks Act 1994 (“the Act”), a series of marks means a number 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.”

A series of marks allows for the protection of a group (or series) of related marks (up to six marks) all within one single application. The registration of a series of marks can be extremely useful in situations where a right owner uses different variations of its mark. The main advantage is cost; although a small extra fee will be payable if the application contains three or more marks, it is significantly cheaper to register six marks as part of a series of marks, than register six separate marks.

At Venner Shipley we recently refreshed our brand, creating a new brand identity with a new design and logo, and used the availability of series applications in the UK to protect a number of variations of our new logo. Protection was obtained for the five logos shown below with the filing of a single trade mark application as a series.

We also registered our stylised words as a series of three marks:

Series of marks represent about 10% of domestic trade mark applications; however, over 39% of applications filed by unrepresented trade mark owners are rejected. As stated under section 41(2) of the Act, for a series of marks to be acceptable, the marks should resemble each other in their material particulars, with the differences only related to non-distinctive elements.

As part of its examination procedure, the IPO will examine each mark and may refuse the application if it considers that the differences between the marks affect their identity. The test is not simply whether the marks in the series would be regarded as being confusingly similar to each other; any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the marks substantially the same.

While each case must be examined individually, in general minor changes in terms of stylisations, fonts or colours configurations used for the marks in the series should be accepted. Similarly, house marks associated with entirely descriptive and devoid-of-distinctive-character elements, should also be accepted.

Will the IPO abolish series of marks? As part of its consultation, it noted that the high number of refusals may suggest that the facility for registering series of marks is not used correctly, or at least not to its full potential. As a result, it is possible that, rather than abolish the facility completely, the IPO may decide to reduce the number of marks that can constitute a series.

This would be unwelcome and detrimental to trade mark owners who file legitimate series applications. Many businesses use several marks that closely resemble each other (for example, the same logo in different colours) and series registrations provide a cost-effective way of protecting these marks.

Therefore, we hope that, if the IPO decides on a reduction in the number of marks allowed under a series, the reduction in number will not be significant. It is not known when the IPO will issue its decision, but it will be waited with anticipation.