Having a registered trade mark is highly recommended if you operate a business. A trade mark provides you with protection from infringement, as well as the exclusive right to use the brand name and image.
Trade mark applications can be timely and costly, yet in certain circumstances you may be able make a single application for two or more variations of your trade mark. This is known as a series trade mark application.
What is a Series Trade Mark?
If you operate a business which sells an array of distinct yet related products, then a series trade mark might be useful to you.
A series trade mark allows you to gain registration of numerous trade marks, whilst only filing a single trade mark application.
For example, if you operate a business called ZOT, and you sell a wide range of products including footwear, headwear and clothing, then a series trade mark application could suit you.
Criteria of a Series Trade Mark Application
The process of applying for a series trade mark is the same as an application for a standard trade mark.
In a valid series trade mark application, the trade marks you wish to register must resemble each other in material particulars – this refers to the main identifying features of the trade marks. This requires that the variations of each mark must be such that the main identity or idea of each mark remains the same.
Furthermore, the marks must only differ in the following ways:
- Statements or representations of the goods or services being claimed; or
- Statements or representations relating to the location, price, number or quality; or
- The colour of the trade mark.
Following on from the ZOT example above, a valid series trade mark application may include an application to register the following marks:
- ZOT CLOTHES
- ZOT HATS
- ZOT SHOES
In this example, the material particulars of each trade mark remains the same; the word ZOT. Whilst each mark slightly differs as a result of the goods being claimed; CLOTHES, HATS, SHOES.
As such, you would be able to get all three of these trade marks registered through the filing of a single application.
Benefits of Applying for a Series Trade Mark
The main benefit of a series trade mark application is that you are able to register numerous marks via a single application, considering the fact that your main alternative would be filing numerous trade mark applications for each individual mark.
This allows you to gain broader protection over your brand name and your business. Furthermore, the cost of filing a series trade mark application is cheaper than filing two individual trade mark applications.
To Sum Up
Although there are benefits to applying for a series trade mark for your business, you must ensure that the strict requirements are met.
Speaking with a legal professional on the issue will help increase your chances of a successful application.
Feel free to contact one of our trademark lawyers by calling 1300 337 997 or filling out the form on this page.
Jethro is a paralegal. His main legal interests are with Intellectual Property, Technology and Innovation, as well as areas of Corporate Law. He is in his final year of a Bachelor of Laws/Bachelor of Economics double degree at the UTS.
Phil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.
