The UK government has launched the second consultation in its IPO Transformation programme, and it focuses on trade marks and designs.
The consultation covers six areas and, in my opinion, the most interesting concerns series trade marks.
What are series marks?
Unusually, the UK allows applicants to file for up to six trade marks in a single application provided the marks “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identify of the trade mark”.
The IPO says annual demand for series marks has followed broader trade mark filing trends, with 25,000 applications in 2021 and 16,000 in 2022 (about 10% of domestic applications).
However, the IPO says that series marks raise more issues than other marks. On average, 65% of series trade mark applications are filed by unrepresented applicants. In 2022, 39% of these applications were objected to and 17% of series marks filed by represented applicants were also objected to.
Series marks have been involved in some notable recent cases, such as the British Gymnastics case (which we blogged about here) and the long-running Glee Club dispute. In the latter case, the Supreme Court granted permission to appeal on issues including whether series marks were compatible with EU law, but the parties then settled.
Maintain, reduce or abolish?
The consultation asks “whether the series mark provisions are still functioning effectively and delivering value to customers”. It invites comments on:
Maintaining the current legal framework providing for series marks;
Reducing the number of allowed marks in a series; and
Abolishing series marks
The consultation states:
“Based on the evidence we presently have, the government’s current preference is to cease offering series marks. This will address the current difficulties caused by improper use of the system. Many valid series applications are received and registered each year. However, the negligible benefit these appear to confer on rightsholders are outweighed by the potential gains to be achieved through simplifying the application processes.”
However, the IPO says is interested in any evidence that shows concrete benefits to customers in holding series marks, and any comments or mitigating actions that could help overcome the issues identified. It also welcomes views on anticipated advantages/disadvantages of the proposals, or potential unintended consequences.
What does this mean?
The consultation suggests that the government is seriously considering abolishing series marks. However, this would be a pity as they are a big benefit for businesses, and especially start-ups and SMEs.
In our experience, series marks can be particularly useful when the same logo is used in several different colourways, enabling the main logo to be registered along with common variations. They are also helpful for protecting marks where the arrangement of a device and figurative word may vary with context.
The numbers of applicants suggest that series marks are a valued part of the UK IP system. It’s hard to see any downsides to them and removing them completely would not be beneficial.
You can submit comments in the consultation until 31 October 2023 here.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com