As part of the ongoing transformation programme at the United Kingdom Intellectual Property Office (UKIPO), the UKIPO has published its second consultation programme on 22nd August. The transformation programme aims to modernise the UKIPO’s current practices and this second consultation focuses on trade mark and design issues. The consultation raises a number of potential changes across the board at the UKIPO, in particular the proposal to abolish the “series trade mark provision”.
The “series trade mark provision” is an oddity of UK trade mark practice and only shared by a small number of other jurisdictions internationally, mostly countries and territories formerly administered by the United Kingdom. A series trade mark allows a number of trade marks which resemble each other as to their material particulars and differ only in regard to non-distinctive elements to co-exist in a single trade mark registration. Currently, in the United Kingdom an applicant can file a maximum of six marks within a single application, providing that the six marks do not differ in terms of their distinctive character and that additional fees are paid (£50 for each additional mark after the first two in the series).
The “series trade mark provision” has lengthy history in the UK, with the series provision first being contained within Section 66 of the Patents, Designs and Trade Marks Act 1833, as amended and carried forward to the 1905, 1938 and then under Section 41 (1) (c) and (2) of the current Trade Marks Act 1994. However the provision has not been without controversy. There was a clear majority to retain the “series trade mark provision” in the preparation of the Trade Marks Act 1994 despite the fact that the provision arguably interfered with EU Law (which is now retained EU law (REUL) created following the UKs exit from the European Union), but this support has dwindled in subsequent years. The last policy review was subject to public consultation back in 2009, and at this point only a small majority of respondents supported the retention of the series provision.
Alexander Pickles, Chartered Trade Mark Attorney at our UK Office weighs in on the debate:
As a general rule of thumb, I am cautious when recommending the series provision to my clients. While the series provision has its uses and can be appropriate, it is often improperly and therefore over used. There is a reason that 65% of series marks are filed by unrepresented applicants and 39% of these applications receive “series objections”. In addition, series marks are also subject to a high objection rate even when filed by applicants with qualified representation, as some representatives use the series provision to attempt to get multiple marks examined for the cost of a single application. The UKIPO has in recent years been cracking down on this practice, and while this loophole has mostly closed there are still issues regarding the series provision which should be addressed.
In my opinion, the most significant issue with the series provision is that it gives a false sense of security to brand holders as they may feel that by filing a series of marks they are obtaining protection for multiple distinctive elements of their brand identity. This is false economy as the key requirement of the series provision is that the marks contained within a series must not differ in terms of their distinctive elements. Accordingly, if an applicant files a series application containing a word mark and a logo mark or a series of marks covering product packaging in different colours, they are essentially admitting that they do not consider these differing elements to form a distinctive element of their brand.
It is important to remember that a registered trade mark is a tool that can be used to enforce trade mark rights against third parties and while largely untested there is an argument that using the series provision could affect an applicant’s ability to enforce its trade mark in future if it wishes to rely upon elements of its mark which have been included as differing elements in a series.
The UKIPO’s consultation is open to public feedback until 31 October 2023. For further information and to respond, the report is accessible HERE