Why is it so tough to register a Series Mark?

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.

The above is a snippet of what an examiner will consider when an owner has filed a trade mark as a series mark application (UK ONLY). However, it is helpful to see why only 40% of applications are granted and accepted under the absolute grounds test so that it can progress to the publication stage of the process. If a mark is similar to that of its other marks in the series but offer its own distinctive element of differs too far from the other marks in the series then it will never be considered as acceptable to pass and will be politely rejected and the owner advised to file it as a separate application.

The beauty of it succeeding is that the fees for this are far less and it means that the trade mark affords further protection depending on the nature and design of the mark. The government website below, offers further information on this and fees but if you wish to discuss these marks further then contact Lawdit and ask for me. We are always happy to talk and will not charge for a conversation on the phone.


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