Series Over: A New Era for UK Trade Marks

Origin & History

 

The concept of registering parts of a trade mark as separate marks or grouping them into a series under a single registration was introduced under Section 21 of the Trade Marks Act 1938.

 

The UK’s current regime for series marks was formally introduced as part of the Trade Marks Act 1994. Under Section 41(2), a series of trade marks is defined as:

 

“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”.

 

Series marks represent a distinctive characteristic of the UK trade marks system, setting it apart from most major international jurisdictions. Only a limited number of other Commonwealth countries provide similar mechanisms, including Australia, Bangladesh, Hong Kong, India, Ireland, Malaysia, New Zealand, Pakistan, and Singapore. Notably, major jurisdictions such as the European Union and the United States do not recognise series trade mark applications.

 

Why the Change? The Transformation Consultation

 

The decision to abolish series marks emerged from the UKIPO's comprehensive digital services review, launched in April 2021 as part of the IPO Transformation programme. This initiative aims to modernise the UK's intellectual property systems by developing a single, integrated platform where users can apply for and manage all their registered intellectual property rights.

During the consultation process, while the UKIPO acknowledged the benefits that series marks provided to applicants, it identified several systemic problems that ultimately led to the decision for abolition.

 

1. High objection rates:

The vague requirement for marks to resemble each other in their "material particulars" adds unnecessary complexity to the application process. Unrepresented applicants comprised approximately 65% of series mark applications, with 39% facing objections in 2022. Objection rates increased steeply with the number of marks in a series. The high objection rate indicated that unrepresented applicants struggled with the complexities of series mark filing requirements.

 

2. Financial Disadvantage to Unrepresented Applicants:

The consultation identified a troubling pattern where many series applications included marks that clearly did not resemble the other marks in the application. Since the UKIPO does not issue refunds for invalid series applications, unrepresented applicants often suffered financial losses through unsuccessful filings, creating an inequitable system that particularly disadvantaged those without professional legal representation.

 

3. Strategic Gaming by Representatives:

Even represented applicants showed relatively high objection rates, leading the UKIPO to suspect strategic gaming of the system. The consultation suggested that some representatives might be deliberately filing questionable series applications as a cost-reduction strategy, essentially attempting to achieve dual examination at reduced cost for what should properly be separate trade mark applications.

 

4. Resource Strain on the UKIPO:

Invalid and problematic applications created significant processing delays and resource implications for the UKIPO. The time and effort required to examine questionable series applications, issue objections, and process responses diverted resources from more straightforward applications, creating inefficiencies throughout the system.

 

In addition, the move to abolish series mark applications aligns the UK system more closely with international practice, as the series mechanism is virtually unheard of in other major jurisdictions, including the EU. This alignment facilitates more consistent international filing strategies and simplifies global brand protection efforts for multinational businesses.

 

What Happens Next?

 

For businesses considering series mark protection, the window is starting to close. However, the removal of the ability to file series applications will only come into effect once the new systems are up and running. The exact date for this is not given at present but the UKIPO has confirmed that plenty of notice will be given.

 

Current series registrations will remain unaffected and fully enforceable. All pending applications submitted before implementation will be examined under the current rules.

 

The decision to end UK series trade marks represents more than a procedural change; it marks a fundamental shift toward greater legal clarity, international alignment and systemic fairness. While the transition presents immediate challenges, particularly regarding costs and administrative complexity, it ultimately promotes a more transparent and equitable trade mark system.

 

Should you require advice on the subject matter of this article, please contact the author or your usual attorney.  We would be delighted to assist.