Registering a trade mark is an excellent way to protect your brand and distinguish your business’ goods and services from others. Most businesses register their brand name and logo as trade marks. You can also register a phrase, slogan, letters, numbers, sounds and smells. If you plan on registering more than one trade mark for your business, you may be able to apply for a series trade mark application. This article will explain the benefits of registering a trade mark and how a series trade mark application works.
Benefits of a Trade Mark
It is always a good idea to register a trade mark, especially if you have a growing business. A trade mark is an important asset and can add value to your business. Upon registration, you have exclusive legal rights to use and commercialise your trade mark for 10 years. After 10 years, you have the option to renew the protection. You also have the power to authorise others to use your trade mark while retaining ownership through a licence.
Trade marks can also stop others from piggybacking off your brand. If another business uses your trade mark for their benefit, you can take action and enforce your legal rights to protect your registered trade mark.
Series Trade Mark Application
A series trade mark application allows you to apply to register more than one trade mark in one application. Registering via a series trade mark does not provide your trade marks with any extra protection compared to a standard trade mark application. However, it allows you to avoid additional costs in registering separate trade marks.
Your trade marks must be similar, and you must ensure that they:
- are very similar to each other; and
- only differ in one or more of the following ways:
- the colour of any part of the trade mark;
- statements or representations relating to names of places, quality, price, or number; or
- statements or representations relating to the goods or services being claimed.
Differences in Colour
If the only difference between two text marks is colour, the marks would typically be considered a series. Generally, the difference in colour would not be considered a distinctive matter and would not affect the identity of the marks.
Differences in Names of Places Quality, Price, or Number
The series marks can also have different descriptions of place or quality. For example, a trade mark may have different text for a business in Sydney and a business in Queensland.
Differences in Goods and Services
To qualify as a series, the trade marks must resemble each other. For example, PK CLOTHING, PK FOOTWEAR, and PK HEADGEAR resemble each other closely. Therefore, they will likely meet the criteria for a series trade mark application. Here, the essential feature, ‘PK’, is present in each trade mark. The extra word following ‘PK’ does not create a material difference.
Continue reading this article below the formRegistering a Series of Trade Marks
Intention to Use
As with all trade marks, you must also intend to use or currently use the trade marks. Only the trade mark owner can apply for registration. An owner can be:
- an individual;
- a group of individuals;
- a company; or
- an incorporated association.
There is a presumption that all trade marks are registrable. However, IP Australia may reject your application and send you a report explaining the grounds for rejection. Rejection might be because your trade mark:
- is contrary to the law;
- do not distinguish your goods or services;
- are too similar to another registered trade mark; or
- there is a formality issue.
Fees
Filing a series trade mark application will incur different fees than a standard application. If you file an application using the trade mark picklist, the cost will be $400 per class of goods and services. However, filing your application without the picklist will incur a fee of $550 per class of goods and services. You can access a comprehensive list of IP Australia’s fees on their website.
Why Should I Apply for a Series Trade Mark?
The main benefit of using a series trade mark application is that it is possible to obtain registration for multiple trade marks in a single application instead of filing numerous trade mark applications for each individual trade mark.
Furthermore, the official fees for filing a series trade mark application are less than filing two standard applications.
Is My Business Eligible for a Series Trade Mark?
To be accepted as a series, the main identifying feature of the trade marks must be the same. If your trade marks differ in any other way, you should not apply for a series, as this will likely render the series invalid.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Registering a trade mark is a valuable business decision as it protects your brand. When seeking to register multiple similar trade marks, it may be more cost-effective to consider a series trade mark application. However, to register via a series trade mark application, you must ensure your trade marks meet the necessary criteria.
If you have any questions or need assistance with a series trade mark application, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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