What on earth is a Series Mark?
Written by Mark Reed on 06 November 2018« Return to Reading Room
The reason why Lawdit receives so many enquiries to file a trade mark application on behalf of the client and why you don't file yourself is the minefield that is the ‘terminology’ relating to trade mark law.
One of the 'head scratchers' that people stumble on is a question which asks what is a series mark. This immediately stops people in their tracks because they do not know, understand and admittedly never heard of this before. It is important to know the filing process and precisely what mark is being filed. This is because once the mark has been processed it cannot be changed/altered (unless classes are being amended- not added to).
A series mark is essentially a way of being able to file several marks in one application which resemble each other. This may be considered as unusual but actually make sense when considering the reasoning behind it. Imagine a group of brands that are all under one umbrella and are so similar that they are clearly linked.
Then imagine us as we generate a quote for the filing of this group of marks but as separate applications. This then lands on the door mat, you quickly rush to see, and have a mild heart attack with the amount of digits on the quote. This then turns in to frustration when you look at the marks you wish to protect and wish there was a way of filing them under one application. This is where a series mark comes in, but note there are some stringent rules to consider.
It was explained in section 41 (2) Trade Mark Act 1994 clearly – ‘A series of trade marks means a number of trade 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.’ It was also broken down nicely by Professor Ruth Annand, as the appointed person in LOGICA BL O/068/03 as having three conditions; Namely, the marks in the series must resemble each other in their material particulars; the differences between the trade marks must not comprise matter which, when considered as a separate element of the trade mark, would be regarded as having distinctive character; the differences between the trade marks must not comprise matter, which when considered in the context of the trade mark as a whole, substantially affects the identity of the trade mark.
It is important to note that the differences between the marks in the application must not affect the identity of the marks when looking at them comparatively. This means that if you put them together side by side and studied them, there would be only minor differences. For example, an acceptable difference would be BEAMER 1, BEAMER 2, BEAMER 3, BEAMER 4. It is clear that the difference is minor, however if the mark was PAINT WEB, an unacceptable difference would be PAYNT WEB which would be considered by the IPO as visually quite different even if it phonetically sounds the same.
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