Changes to UK applications for a series of trade marks
The UK Intellectual Property Office (UK IPO) has historically permitted a series application consisting of a number of trade marks which are essentially the same and where any differences are not significant. For example, such an application could cover the same word mark shown in capitals, in italics, and in plain lower case lettering. The number of marks that could be applied for in a series application has been unlimited and there has been no additional cost for consideration of a series of marks. Upon examination, it could be determined whether any or all of the marks being applied for within the series application were considered to be registrable; if any were not then these could be deleted. Further, if the series was not deemed acceptable, then this could be divided into separate applications for individual marks whilst retaining the original
filing date.
However, for UK trade mark applications filed on or after 1 October 2009 the following changes will apply:
- the maximum number of marks in a series will be capped at six
- there will be no additional UK IPO fee for the first and second marks in the series; however, each mark beyond the
first two will incur an additional official fee of £50
- it will not be possible to divide an application on the basis of the marks in the series, although divisions based on the
selected goods and services will still be possible.
An important impact of these changes is that if, upon examination, it is decided that the marks do not constitute a valid series then it will be necessary to delete marks from the application until a valid application remains. No refund of any series fee paid will be made in these circumstances. Further, if protection is required for the marks that are deleted this would have to be via a new application, which would only be entitled to its actual filing date rather than retaining the original date of filing.
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