Trade Mark Classification
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Following a 10-week consultation programme launched in August 2023 as part of the UKIPO’s ongoing transformation programme, it has been confirmed that the option to file a series mark will be discontinued from Autumn 2025.
For those not familiar with the series mark provision, it allows an applicant to file a single application covering up to six variants of their trade mark, which differ only in non-distinctive elements. For example, the series might include a word mark in lower, upper, and sentence case, or a word mark with and without a hyphen. It might feature a logo in multiple colourways, or black-and-white and reverse black-and-white versions.
Filing a series mark can be a cost effective and efficient alternative to filing separate applications for multiple similar versions of a mark. However, concerns were raised that applicants often misunderstand the criteria and scope of protection of the series mark and / or misuse the provision to try to obtain multiple trade mark examinations at a reduced cost.
In addition, series marks are not offered in most other jurisdictions. Therefore, when an applicant decides to file their trade mark internationally, they must either select one variant to proceed with, or file separate applications for each variant they wish to protect in other jurisdictions.
It was concluded that the series mark provision is not functioning effectively and will be removed.
The UKIPO has confirmed that all existing series mark registrations will remain valid and will continue to be maintained as series marks.
Our opinion:
Aside from the UKIPO’s observations on the misunderstanding and misuse of the series mark provision, we have long taken the view that series marks are, in most cases, of limited benefit. Their removal should make little to no material difference to the scope of protection of a trade mark registration, which already extends to marks that are confusingly similar.
Where series marks have been beneficial is in allowing the straightforward protection of multiple colourways of, for example, a logo. Applicants will now need to carefully consider how best to protect trade marks that incorporate colour, to ascertain whether a single registration will be sufficient for their needs.
You can read the full response to the UKIPO Transformation programme: second consultation here.
Author: Fiona Jones
Further advice
For further advice, please contact the trade marks team at Hindles.