Series Trade Mark Applications
What Is A Series Trade Mark Application?
A trade mark is a business’ most valuable marketing tool. It is a way of identifying a business, its products, and/ or services from another business, product, or service in the market. Businesses most commonly use their brand names or logo as their trade marks. However, there are also a number of signs that can be used as trade marks, such as shape, color, sound, scent, phrase, slogans, or letters.
It is also possible to register two or more alternatives of your trademark in one series of Trade Mark application otherwise known as a series trade mark application. Read on to consider the advantages of registering a trade mark and why you might want to use a series trade mark application.
Advantages of Trade Mark Registration
To recap, you register your trade mark to stand out from others in the market and protect your exclusive rights to use, sell and licence the mark from unauthorized use. A registered trade mark prevents competitors from registering a similar trade mark.
Trade mark registration will automatically give you a right to bring an action in case of infringement. The key advantage of registration is that the rights arise from the registration itself, not from any reputation attached to the mark. Even trade marks that have not been used can be protected provided they have not become vulnerable to an non-use action and marks that have been used only in one part of the country are protected nationally.
Registering your trade mark will also add to your brand’s value and credibility while building brand loyalty. Your trade mark will be published in the trade mark register which means that others will be put on notice and alerted to your trade mark rights. Social media platforms also have measures in place to protect the rights of trade mark owners.
A trade mark registration can be maintained indefinitely as it may be renewed every 10 years.
Series of Trade Marks under the Trade Marks Act 1995 (Cth) (‘Act’)
Under section 51 of the Act a person may make a single application under subsection 27(1) of the Act for two or more trade marks if the trade marks resemble each other in material particulars and the trade marks differ only in respect of one or more of the following three criteria:
- statements or representations as to the goods or services in relation to which the trade marks are to be used;
- statements or representations as to number, price, quality or names of places;
- the colour of any part of the trade mark
To qualify as a series the trade marks must first resemble each other in material particulars. That is, the identifying feature or features in each trade mark of the series must be essentially the same and any differences minor.
Consider Using a Series Trade Mark Application
Why would you want to file a series trade mark application? Because it offers broader, cost effective protection if you have one brand which covers a range of related but distinct products. It allows you to register more than one trade mark in one Trade Mark application provided the trade marks are essential the same and the differences between the trade marks must be minor.
Series Trade Mark Application Example
An example of a valid series is: OPN HATS, OPN SLIPPERS, OPN SHIRTS. The material particular which is “OPN” remains the same throughout all three trade marks and what makes them different are the words “HATS”, “SLIPPERS”, and “SHIRTS”.
On the other hand, a series that does not meet the criteria is this: OPN, opn because the difference is not covered in one of the three criteria above.
Registering a Series Trade Mark
Although all trade marks are presumed registrable, IP Australia may still deny your application. In doing so, they will provide you a report that states the grounds for rejection. Some grounds of rejection may be that the trade marks are contrary to law, there is an issue of formality, they do not differentiate your goods or services, or they are very much alike another registered trade mark. See professional advice as these applications can be complex. In Melbourne you can take advice from our Trademark lawyer in Melbourne.
Takeaway Points:
- It is possible to register two or more variations of your trademark in one application.
- To register a series trade mark, it must meet the statutory criteria.
- The trade marks must resemble each other in material particulars.
- A clear benefit of a series application is that it is possible to obtain broader protection for the various ways in which you use your trade mark without have to pay multiple fees for separate trade mark applications.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.
