Isolated Series in the Isolated Kingdom

Lorenzo Litta

When someone says "isolated", it is easy to think abouth UK. For trademarks quite often happens the same. UK trade mark Law allows applicants to cover more than one variant of trade mark in a singe application: it means that is possible to have "trademark series" without any extra filing fees. This is something generally acceptable if the marks do not vary substantially and is often used to cover colour and black & white versions of the same mark.

Recently, UK Intellectual Property Office has considered abolishing series applications, since are an unusual feature in trade mark world.

However and not so unexpectedly, UKIPO has just announced that it will keep series applications, but restricting their application. Let's see most important changes:

• A maximum of six marks permitted in a series application.
  
• Tactical use of series applications will be discouraged.
  
• If any mark is not truly part of a series, it will be deleted from the application.
  
• It will no longer be possible to "divide" a series application into one or more new applications, preserving the filing date.
• Marks not forming part of the series will have to be deleted from the application.

According to our British friends, series applications will remain a useful device but "they must be used with care". In fact, claiming marks form a series is a tacit admission that the marks do not differ in their distinctive elements.

New rules are expected to come into force on 1 October 2009...