UKIPO to discontinue “series” trade marks

In consultations currently underway to transform its processes, the UKIPO has confirmed that the ability to file “series” trade marks in the UK will be discontinued when the UKIPO launches its new digital trade mark system, which is expected to begin development in Autumn 2025. Existing “series” marks that have matured to registration will remain valid and enforceable.

A “series” mark allows the applicant to file up to six marks within a single application, provided the marks are identical in their material particulars (essentially, look the same, sound the same and mean the same); and provided any differences are minor (such as punctuation, font, etc). Essentially they were and (currently) are of some use to applicants seeking to protect minor variants on a core mark. The following are given by the UKIPO as examples of valid series marks:

CAT – cat (upper and lower cases, same word)
Room Lock – RoomLock (same words, minus the space)
WeLike.com – WeLike.co.uk (the top level domains are both well known)

So series marks are of “some use”, allowing applicants to more clearly protect minor variations on a mark, rather than have to file separate applications.

However series marks have caused significant confusion. In recent years, around 40% of series applications filed by unrepresented applicants were refused (since applying the “looks, sounds and means the same” test is not always straightforward; and many variations are not “minor”). Further, series marks are not recognised under the Madrid Protocol, leading to inconsistency with global filings. Consequently, and versus single mark applications, series applications add complexity and lead to an additional administrative burden on the UKIPO.

With the end of series trade marks on the horizon, many applicants may find themselves at a disadvantage, facing higher filing costs as a result. Conversely however, many series applications and registrations add little, if anything, to the core marks they protect (since registration of the “core variant” on its own as a single mark will often be sufficient to protect “minor” variations in any event).

So not a major change, but one to be aware of – and one which will, hopefully lead to a greater efficiency at the UKIPO overall, which can only be of benefit to applicants at large.