The UK Intellectual Property Office (UKIPO) has published the response to the second phase of its transformation consultation. The consultation ran from August to October 2023, focusing primarily on trade marks, designs and tribunals services. The aim was to simplify processes and improve consistency across IP rights, as well as modernising IP services in the UK.
Applications for Series of Trade marks
The current service allows for a trade mark application to contain up to six variations of the mark, known as a series. The trade marks must be very similar, differing only in minor, non-distinctive ways that do not significantly alter the overall identity of the trade mark. Applying for a series of trade marks instead of filing applications covering only one trade mark allows applicants to take advantage of reduced fees.
Many applications for a series of marks do not meet the requirements, particularly for those which were filed without legal representation. In 2022, almost 40% of applications for a series of marks were rejected. Additionally, for many applicants, it is unclear as to whether a registration for a series of marks provides any additional protection compared to a standalone mark.
Despite concerns raised about the increased fees and enforcement costs, as well as potential difficulties for existing registrations of series marks, the IPO intends to discontinue the service when the digital trade mark service is launched in Autumn 2025.
What does this mean for me?
Existing registrations for a series of trade marks will remain valid, and new applications for a series of trade marks can be made until the service is discontinued. Clients are encouraged to review their trade mark portfolio and consider making any new applications for a series of trade marks as soon as possible before the removal of the service. Your usual Forresters attorney will be happy to answer any questions you have about how the changes to the UKIPO’s services may affect your trade marks.
