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What Is A Series Trade Mark Application?

A trade mark is your most valuable marketing tool. It is a sign that identifies a business as the origin of the supply of its products or services to distinguish from another business, product, or service. Businesses most commonly use their brand names or logo as their trade marks. There are, however, also a number of signs that can be used as trade marks, such as shape, color, sound, scent, phrase, slogan, or letters.

It is possible to register two or more alternatives of your trade mark in one 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

The registration of your trade mark gives you the right to defend your mark and to start legal proceedings in case of infringement.

Registering your trade mark will also add to your brand’s value and credibility. Your trade mark will be published in the official trade mark register which means that others can be alerted to the ownership of your trade mark. In addition, your brand can obtain protection in social media as these platforms typically have mechanisms in place to protect against intellectual property abuse.

  • Add value to your business
  • Rights to use, licence and sell your trade mark
  • Protection from unauthorised use by competitors throughout Australia
  • Prevent others from registering your trade mark

Your trade mark registration last for ten years from the date that you file it and, after ten years, you can renew the trade mark indefinitely for another ten years.

Consider Using a Series Trade Mark Application

Why use a series trade mark application? It can offer broader and cheaper protection and filing a series of trade marks can be useful if you have one brand which covers a range of related but distinct products.

It is also possible to register two or more alternatives of your trade mark in one application otherwise known as a series trade mark application.

Series of Trade Marks under the Trade Marks Act 1995 (Cth) (‘Act’)

The Trade Marks Act (Cth) describes a series trade mark as a single application for the registration of two or more trade marks in respect of goods and services if the trade marks resemble each other in ‘material particulars.’ This means that the main identifying feature or the ‘idea’ of the marks must be the same.

The trade marks must 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, therefore, as a series, the trade marks must resemble each other in material particulars. That is, the identifying feature or features in each trade mark of the series must be essentially be the same and any differences minor.

To illustrate a series: 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. Although the words resemble each other, the difference between upper case and lower case does not qualify as a series according to the above criteria.

Takeaway Points:

  • It is possible to register two or more alternatives of your trade mark in one application.
  • To register a series trade mark, it must meet the criteria set out in the Act.
  • The trade marks should resemble each other as to the ‘material particulars’.
  • A series trade mark application can offer a broader and more cost effective protection because you avoid additional costs in applying for separate trade marks.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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