Series trade marks

Client Testimonial
Maybourne Hotel Group owns and manages Claridge's, The Connaught and The Berkeley — three of the most renowned hotels in London. Our brands are highly valuable assets and we have worked with UDL since 2005 on all aspects of the protection and enforcement of our trade marks. We have always found Gareth Price and team at UDL to be approachable and they make what are complex commercial issues easy for us to understand.

Maybourne Hotel Group

When developing a new brand, it’s often the case that several versions are created. You might be experimenting with font, colourways, upper and lower case characters; or you might be thinking about including a description of the product, service or location. If these versions meet certain requirements, it might be possible to get trade mark protection for them as a ‘series’. This means that you only need to submit one application, rather than many. This would save you lots of time and the associated application fees.

The criteria needed for variations of a mark to be accepted as a series has changed over time. Now, the UK Intellectual Property Office (UKIPO) takes a fairly strict stance — and 40% of series applications don’t get accepted.

The legal definition states that a ‘series of trade marks’ means: “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."

In practice, this means that any variation in the non-distinctive features of each mark must leave their visual, aural and conceptual identity largely the same. Much depends on what part of the mark is being changed each time. Generally, if the part being altered is descriptive or non-distinctive, the series may be accepted.

Here’s a quick guide to common trade mark changes and whether this means that they are likely to be considered as part of a series.


What can be considered part of a series

  • Adding a word at the end of a mark — but only if this word is wholly descriptive and the remainder of the mark is distinctive.
  • Adding a place name at the end of a mark — but only if they are non-distinctive for goods and services.
  • Changing the font — but only if it’s a standard font.
  • Upper and lower case — e.g. LV= GREEN HEART FOUNDATION and LV= Green Heart Foundation.
  • Adding minimal stylisation (e.g. a border).
  • Changing the mark’s configuration — e.g. DR LORI BETH BISBEY and DOCTOR LORI BETH BISBEY, but only if any distinctive elements stay in the same proportion to the rest of the mark as before.
  • Plurals — but not if this creates an invented word.
  • Changing in spelling — but only if it’s a common misspelling. This would likely include abbreviations of non-distinctive words — e.g.

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  • Numerals — providing that the remainder of mark is distinctive.
  • Colour and greyscale — providing that the logo is distinctive — e.g.

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  • Eliding words — e.g. STORMSHIELD and STORM SHIELD, providing that it’s clear where the division is.
  • A change of a domain name extender — providing that extenders are equally well known and non-specific.
  • Character marks — providing that the variations are recognisable as some character.
  • Adding a logo to a mark
  • Adding a word at the beginning of a mark
  • Adding a company name or domain name extender


What can’t be considered part of a series

You should bear in mind that series marks are only allowed in the UK, Australia, UAE, Thailand, Brunei, Singapore, Papua New Guinea, Pakistan, Qatar, Saudi Arabia, Tanzania, Malaysia, Hong Kong, Ireland, India, New Zealand, Bangladesh and Trinidad and Tobago. For all other countries, you wold need to select one version.

How we can help

We can advise whether your marks constitute a series and help you to get the most out of your protection at a reasonable cost. If you’re considering filing in territories where series marks are not permitted, we can advise which version would offer you the best protection.

Key people

Meet some of our trade marks team.

Leeds

Alan Fiddes

Managing Partner

London

Alison Simpson

Managing Partner

Leeds

Newcastle

London

Mark Green

Partner

Cardiff

Get in touch

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Alternatively, you can contact us directly and speak to a member of our specialist team.

+44 330 107 5077

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