Should I Apply to Register for A Series Trade Mark?

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Table of Contents

• What is a Series Trade Mark Application?
• Criteria for Application
• Registering A Series Trade Mark
• Key Takeaways
• Frequently Asked Questions

A series of trademarks might be useful if you have one brand covering a range of related but distinct products. For example, a series trade mark application allows you to apply for more than one trade mark in one application. However, registering a series trade mark does not provide your trademarks with any additional protection compared to a standard application. Although it does allow you to avoid additional costs you would incur if you registered respective trademarks. This article explains a series trade mark application, and how to register one.

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What is a Series Trade Mark Application?

A series trade mark application can be helpful if you operate a business that sells an array of distinct yet related products. For example, a brand like Uber provides various services, such as UberPool and UberEats.

Additionally, this trade mark allows you to gain registration of numerous trademarks while only filing a single trade mark application. This means you can avoid the cost of filing numerous separate trade mark applications.

Criteria for Application

To qualify for, you must ensure that your trademarks are:

• very similar to each other; and
• only differ in:
  • 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.

We explore these differences further below.

Differences in Colour

Trade marks in a series can differ in colour as long as they retain some essential features. For example, Coca-Cola could register a series of trademarks for its original Coke formula, which has red packaging, and its diet formula, which has black packaging. In this example, there are not only variations in colour, but they also vary in the description. For instance, consider ‘original’ Coca-Cola and ‘diet’ Coca-Cola.

Differences in Location, Place, Quality, Price, or Number

Trade marks in a series can also differ in descriptions of place or quality. For example, you might register a logo for your business with varying text for your business in Sydney (Eora) and your business in Melbourne (Naarm).

Differences in Goods and Services

The series marks can also have different words to describe the types of goods or services for which the marks will be used. For example, Foxtel News View and Foxtel Kids View describe variations of the services Foxtel offers.

Registering A Series Trade Mark

There are a few points you should keep in mind when registering your series of trademarks.

Intention to Use

To register the series of trademarks, you must also intend to use, or currently use, the trademarks. In addition, only the owner of the trademarks can apply for registration. This can include you as an individual or a group of individuals, a company, or an incorporated or unincorporated association.

Fees

Filing a series trade mark application will also involve different fees than a standard application. Using the trade mark picklist in your application will incur a $400 fee per class of goods and services. If you file an application without the picklist, you will incur a $550 fee per class of goods and services. You can find a comprehensive list of IP Australia’s fees on their website.

Key Takeaways

A series trade mark application allows you to apply for more than one mark in an application. To qualify, you must ensure that your trademarks are very similar and can only differ slightly. These differences can be found in:

• 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 you are claiming.

If you have any questions about registering a series trade mark, 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.

Frequently Asked Questions