Summary and implications
Current UK trade mark rules allow applicants to cover more than one variant of trade mark in a singe application as a "series" without any extra filing fees. This is acceptable if the marks do not vary substantially and is often used to cover colour and black & white versions of the same mark. The UK Intellectual Property Office considered abolishing series applications, which are an unusual feature of our trade mark system. The UKIPO has just announced that it will keep series applications, but restrict their application. New rules are expected to come into force on 1 October 2009.
- A maximum of six marks permitted in a series application. No extra official fees for just two marks, but £50 for each additional mark.
- Tactical use of series applications will be discouraged. If any mark is not truly part of a series, it will be deleted from the application. Often an application has been use to "test" the UKIPO's reaction to a word mark with borderline distinctiveness by filing it with other more distinctive variants, even if a "series" objection is expected.
- Division will no longer be permitted. It will no longer be possible to "divide" a series application into one or more new applications, preserving the filing date. Marks not forming part of the series will have to be deleted from the application.
Series applications will remain a useful device
However, they must be used with care. Claiming marks form a series is a tacit admission that the marks do not differ in their distinctive elements. Also the benefit of an early filing date will be lost for any marks not held to form part of the series.
Changes to fees
The new rules will also introduce some minor official fee changes to encourage e-filing (£30 reduction), and an increase in the fee for requests for an extension of time (from £50 to £100).