In a move to modernise its services, the UKIPO has decided that it will ditch the option for brand owners and other applicants to file trade mark series applications.
What is trade mark series?
The UK Intellectual Property Office (UKIPO) has historically offered an option for applicants to file up to six variations of a trade mark in one single application. Many companies and individuals have taken advantage of this option in an attempt to broaden the scope of legal protection for the trade mark together with flexibility to use it an alternative manner in their branding and marketing at a reduced cost (for example, filing uppercase and lowercase variations for word marks, or colour and greyscale variations for logo marks).
Though allowing some flexibility for use, the option to file a series is limited to immaterial differences which are non-distinctive and do not impact the overall identity and impression of the trade mark. To the extent that there are material differences, a separate application would be necessary, carrying additional filing and legal costs.
The UKIPO’s decision
One of the key drivers to its decision is due to the misunderstanding that series applications will offer protection for multiple distinct marks within one application, particularly among unrepresented applicants facing objections to applications. The UKIPO is seeking to simplify the process and to avoid potential misuse with the aim of securing multiple examinations at a reduced cost.
Anecdotally, the variation between examiners as to what is (and what isn’t!) acceptable has caused some serious frustration for applicants and this change is (partly at least) likely a response to applicants trying to blur the lines between trade mark series applications acting as a way for applicants to hedge their bets by having two bites at the cherry for words and logo marks, especially if the word mark application is borderline distinctive.
The UK is one of the only trade mark regimes which has offered trade mark series applications, often creating issues with priority claims and recognition with other national IP offices. Therefore, the UKIPO will be moving further towards an internationally consistent IP system.
The UKIPO has not yet implemented this change (with rumours that it will be implemented in September 2025, at the earliest).
What will the impact be for brands?
This change in the UKIPO’s approach will only apply to new applications; existing applications (and already registered trade marks) will not be impacted and will remain as valid registrations.
Brands will need to adopt different strategies – and should they want the equivalent protection – they will need to file multiple separate applications which will mean additional costs for filing applications as well as maintaining portfolios. Brands may consider making less trade mark applications and concentrating on registering their key assets. However – and while not providing the same level of legal protection – brands can continue to rely on other intellectual property rights to protect and enforce their rights (including unregistered rights and passing off).
Although increased costs will be a downside, this change will bring certainty to the application process. The effectiveness of series applications can often be limited in practice due to the requirement that each variation must not impact the mark’s overall identity. As a result, it is likely that many brands holding series trade marks are not currently using them to their full extent and could be at risk of cancellation. Further, given the UKIPO’s stringent approach to series applications, the variations acceptable for registration are often so minor in practice that a single mark would provide adequate protection.
Once implemented, the UKIPO has said it will monitor the impact of the change. However, given the nature of series applications and the high rejection rates, it is anticipated that this change will have minimal impact for brands seeking trade mark protection in the UK.
Good news though if you already have existing and pending series marks as these will stay valid and unaffected!
If you are looking to protect your brand’s assets and need trade mark advice, get in touch with our commercial and intellectual property team at [email protected].
