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 trade mark 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 use 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.

A trade mark is a great marketing tool as it carries the identity and reputation of your product or service. It differentiates your brand from others in the market and draws in customers. For example, even something as simple as a catchy one-word brand name or a unique logo as a trade mark will easily allow customers to identify and remember your brand.

Trade marks can also stop others from piggy-backing off your brand. If another business is using your trade mark for their benefit, you can take action and enforce your legal rights to protect your registered trade mark.

What is a 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 in comparison to a standard trade mark application. It does, however, allow you to avoid additional costs in registering separate trade marks. Your trade marks must be similar, and you must ensure that they:

  1. are very similar to each other; and
  2. only differ in one or more of the following ways:
    • the colour or part of the trade mark;
    • statements or representations relating to a location, place, quality, price, or number; or
    • statements or representations relating to the goods or services being claimed.

For example, UberPool, UberX and UberEats resemble each other closely and therefore meet the criteria for a series trade mark application. Here, the essential feature, ‘Uber’, is present in each trade mark. The extra word or letter following ‘Uber’ does not create a substantial difference.

Registering a Series of Trade Marks

To register the series, you must also intend to use, or currently use, the trade marks. Only the owner of the trade marks can apply for registration. An owner can be an individual or group of individuals, a company, or an incorporated or unincorporated association. Therefore, you must be the owner of the trade marks to register a series trade mark application. It is important to ensure that your series of trade marks meet the necessary criteria before applying. Determining whether your series of trade marks meets the criteria can be confusing. It is, therefore, best practice to seek advice from a trade mark lawyer.

There is a presumption that all trade marks are registrable. However, IP Australia may reject your application. If IP Australia rejects your application, they will send you a report explaining the grounds of rejection. Your trade marks may be rejected if they are contrary to the law, they do not distinguish your goods or services, they are too similar to another registered trade mark or there is a formality issue.

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 is best to use a series trade mark application because it is cost-effective. 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, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
David Rosenberg

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