Can I apply for more than one trade mark in the UK

5 February 2012

If you have a trade mark that appears in different fonts/type face you may be able to apply for a series mark.

A series of trade marks means a number of trade marks which resemble each other as to their material details and differ only as to matters of non distinctive character that does not affect the identity of the trade mark i.e type face.

An application for a series of marks can include a maximum of six marks with the first and second marks being included in the application fee, the additional marks then attract a fee of £50 each.

There are many instances when series mark could or could not be acceptable and each case will be looked at individually. As a rule however the different elements cannot be the distinctive elements for example sometimes different colours in a mark can be acceptable if they are not the distinctive element. See another example below taken from the UK IPO manual and explains it well. If you are confused contact me and I will explain this further.

acceptable:

VLAD'S NEW YORK

VLAD'S PARIS

VLAD'S LONDON

(Class 25) clothing.

Geographical names are not to be regarded as necessarily immaterial and nondistinctive. The geographical names added to the distinctive word "VLAD'S" in this case are clearly non-distinctive for the goods concerned. In this case they may be regarded as making no substantial difference to the identities of the trade marks.

These marks are a series.

unacceptable:

BLINK RIO DE JANEIRO

BLINK MARAKESH

BLINK COSTA BLANCA

(Class 29) Milk.

These three marks would not be considered to constitute a series as the geographical element in each of them is not self evidently so non-distinctive that the average consumer would be bound to ignore it as purely informative matter. The identities of these marks therefore depends, in part, upon the inclusion of the geographical names.

If each trade mark is substantially different i.e different words or the addition of a logo you will need to file separate applications. The Trademarkroom will offer you a discount on our fees but you wil still have to pay the UK IPO fee each time your file your trade mark application.

Signature: Jane can be contacted via email on jane@trademarkroom.com.