Series trademarks – What are series marks and what are they useful for?

What are series trademarks

Practically every country in the word allows one to register trademarks in order to protect the name or design they use to promote their goods or services.

Why register a trademark?

The only way to thoroughly protect your trademark is to register it. If you don’t register your brand name as a trademark, then your business could be harmed by third parties who decide to use the same name or logo.

Trademarks are only protected in the country in which they are registered. When a trademark is registered, the ® symbol can be placed next to the trademark. This tells third parties that your trademark is legally protected on a federal level. However, the registration symbol ® can only be used when the trademark that shows on your products or services is identical to the registered trademark. Any variant of the trademark would be considered a different, unregistered trademark and would technically be unprotected.

You may have noticed that many, if not most companies, use different variants of the same trademark on their products. This is usually for design purposes since different versions look better depending on the actual products the trademark is used on, or where on the packaging it is placed. In most cases the differences are minimal, and one may not even notice them. However, no matter how small the difference may be, full trademark protection is only secured upon registration. To maintain protection, the trademark must be identical to the trademark that was filed, otherwise protection will be lost.

It is no surprise that trademark registration is not free. The cost of protecting your trademark will vary depending on the countries you wish to register in and the number of classes that will be included in each registration.

Due to costs and budget limitations many companies do not register all variants of their trademark and generally opt to register the version they use the most, or at least the one that is the most similar to all the other versions. This of course can leave trademark owners unprotected or exposed to legal disputes as third parties may try to use “similar” versions.

Registering your trademark gives you the right to prevent third parties from using not only identical but also confusingly similar trademarks. What may or may not be considered confusingly similar is usually the basis of trademark disputes.

In a perfect world where budgets are not an issue one should register absolutely every version of a trademark that is used.

In the real world, where budgets are always an issue, registering every possible version of a trademark is not cost effective. For some, the solution is to register what is known as “series trademarks”. These “series” allow trademark owners to protect themselves without having to invest more money in multiple trademark registrations just to protect different variants of near identical marks.

What are series trademarks?

A series trademark refers to several trademarks that are similar yet different only in minor, non-distinctive characters that do not substantially affect the identity of the trademark. Series marks are not only practically identical to each other, but they are also registered in the same country, belong to the same owner, and protect the same products and services.

When one registers a series trademark only a single trademark is registered, but multiple versions of the trademark are included within the registration. Therefore, what would normally need to be registered as different individual trademarks instead is considered as a single registration. Only one registration number is given to all the variations.

Not all countries have the option of registering series trademarks. In fact, only a minimal number of countries allow series trademark registrations. Furthermore, even in the countries that offer this option, the criteria to determine what may or may not constitute an acceptable series trademark can vary.

Why are Series trademarks useful?

Standard trademarks need to be registered exactly as they will be used. Therefore, when one uses a trademark in different ways with minimal changes these different variants will not be directly protected. In countries where series trademarks are not an option, technically you should register each variant of the trademark as an independent registration, which of course can be incredibly expensive.

In countries where series trademark registration is an option, a single registration of series marks may cover all the different variants that you use. In other words, series trademarks would allow you to register “multiple” variants of the trademark as a single registration, granting protection to each variant by only having to pay for one registration.

How do you know when you can register a series trademark?

Not all countries currently have this option. Each country has different rules, so to determine if your trademarks can be applied as series trademarks you should always first contact an expert.

Below you can find a few examples of the specific criteria used by some of the trademarks offices around the world that offer series trademark registration as an option. These examples are in addition to the basic requirement that all variants within a series must have the same owner and protect the same products and/or services.

Australia

For series trademarks to be accepted in Australia, the differences between each version should be limited to:

  1. Changes of the goods or services mentioned in the trademark’s name or logo.
  2. Changes of the number, price, quality or names of places in the trademark’s name or logo.
  3. Changes of the colors that are part of the trademark.

New Zealand
 
For series trademarks to be accepted in New Zealand each version should only differ in the following:

  1. The goods or services stated in the trademark name which the trademark will also protect.
  2. The number, price, quality or names of places stated in the trademark name.
  3. Other non-distinctive changes that do not substantially affect the identity of the trademark.
  4. Color within the trademark’s design.

Singapore

In order for series trademarks to be accepted in Singapore each version presented as a series mark must comply with the following:

  1. Each mark in the series must resemble each of the others in its representation, that is, the main features in each of the trademarks must be the same.
  2. The differences between the marks must be non-distinctive in nature.
  3. The differences between the trademarks must not substantially affect the identity of the trademarks as a whole.

United Kingdom

In order for series trademarks to be accepted in the United Kingdom they should all:

  1. Look the same.
  2. Sound the same.
  3. Mean the same.

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IGERENT offers international trademark registration. If you are interested in protecting your trademark, contact us for information and to determine the best overall cost-effective strategy to protect your trademark in the markets you require. Our experts will help you determine whether a series trademark, standard registration or any other methods of protection are best for you.
 
 

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