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MORE THAN JUST A PILOT: HOW TO GREENLIGHT YOUR TRADE MARKS TO A SERIES

Following on from our previous post in this series regarding less utilised trade mark applications which may be beneficial in providing additional protection to your brand or a new and efficient avenue of protection not previously considered, we continue our summary of less common trade marks. Defensive, series, collective and certification trade marks are not common trade mark applications but provide unique and strategic protection which may supplement existing protection and/or provide additional protection. As seen below, of the 858,686 registered marks in Australia, 9,224 are series marks. In this second article we look at series trade mark applications, when they are useful and how they work.

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What is a Series Trade Mark Application?

A series trade mark application allows two or more marks which are essentially the same to be registered as a single registration. To be a valid series, the marks must only differ in one or more ways prescribed by the Trade Marks Act 1995 (Cth).

Requirements for Series Trade Mark Application in Australia?

In accordance with section 51 of the Trade Marks Act 1995 (Cth), a single application may be made for two or more trade marks if the trade marks:

(1) resemble each other in material particulars and

(2) the trade marks differ only in respect of one or more of the following:

(a) statements or representations as to the goods or services in relation to which the trade marks are to be used;

(b) statements or representations as to number, price, quality or names of places;

(c) the colour of any part of the trade mark.

Why have a Series Trade Mark Application?

Series trade marks can be an effective method to expressly broaden protection for your trade marks. By claiming multiple marks which meet the requirements for a valid series, you increase the scope of protection. For arguments sake, in some circumstances the variations of a valid series may further bring an allegedly infringing mark within the scope of protection afforded by the series registration.

In addition to the strategic aspect of broadening protection, there is also a cost savings which allows the applicant to avoid paying for separate applications, separate prosecution costs and separate renewal fees. If the applicant is a self-filer, these costs may be relatively minimal initially. However, if engaging an attorney, the costs may be more due to professional fees for the expert advice and the preparation and filing of the individual marks.

Examples

While the reasoning for not accepting a series trade mark are not available without a freedom of information request, we can look to cases where marks are deemed to be a valid series versus an invalid series.

Valid Series

MarksSection 51(2) Subsection
ART MONTH
ART MONTH SYDNEY
ART MONTH MELBOURNE
ART MONTH BRISBANE
ART MONTH CANBERRA
ART MONTH DARWIN
ART MONTH ADELAIDE
ART MONTH PERTH
Under section 51(2)(b) the only difference between the marks is the inclusion of
geographical locations. Rather than filing 8 separate marks, the Applicant was
able to file a single series trade mark application.

Marks:

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Section 51(2) Subsection
Under section 51(2)(c) the only difference between the marks is the inversion of colours. While marks without colour limitations are deemed to be registered for all colours, series trade marks may be beneficial where there are dominant versions which are used more than other colour palettes.

Invalid Series

MarksSection 51(2) Subsection
IDAK I.D.A.K.While the two marks may resemble each other in material particulars, the differences are not specified in any of the subsections under section 51(2). Accordingly, these are an invalid series.
IDAK BLUE IDAK REDWhile the two marks contain the colour words they do not fall within the intended scope of subsection 51(2)(c). As such, it is not the colour of the mark which is changing and therefore, is considered an invalid series.

A word of caution when filing a series application, if deemed to be an invalid series, the applicant must then choose which mark they wish to proceed with and the other must be deleted from the application. Accordingly, filing a series trade mark application should be limited to instances which meet the requirements of section 51 of the TMA and not speculatively in an effort to avoid/delay costs of multiple applications.

Conclusion

Series trade mark applications can be an effective way to broaden protection while saving on costs of filing additional trade mark applications. If you are interested in a series trade mark application or you are unsure whether one is right for you or your business, contact a Trade Marks Attorney at Michael Buck IP for advice, preparation and filing of your trade mark application.