A ‘series trade mark’ refers to minimally different versions of the same trade mark. According to the commonly accepted legal definition, series marks resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark. In other words, the 'idea' of the mark must remain the same across the series.
It is important to note that there are only a few countries whose registries recognise and allow series trade marks. Further, the registries that do offer this filing option are incredibly strict in their application of what is accepted as a series mark.
Examples of the kind of variation that would be allowed as part of a series application/registration include the following:
- the same word in different fonts;
- the same word in a different case (e.g., lower case and UPPER CASE);
- minimal stylistic variations (e.g., a border);
- variations in colour – provided the colours in question are not distinctive parts of the mark;
- changes in spelling (e.g., whiskey and whisky); and
- the addition of a wholly descriptive word/qualifier at the end of the mark (e.g., different flavour options for the same food product).
It goes without saying that, in addition to the respective versions of the trade mark being nearly identical to one another, a series mark must also be applied for in the same country, in the same class (for the same goods or services) and belong to the same owner.
Ordinarily, a separate application would be required for each iteration of the trade mark that you are looking to register. Alternatively, you would need to choose a standard version of the mark and eliminate the ‘variable’ (i.e., non-distinctive or descriptive) matter.
With a series trade mark, however, you can file a single application – meaning only one application fee – to cover the different versions of your trade mark that you intend to use. This also leaves you less exposed to potential infringement by third parties who may try to exploit the ‘gaps’ in the standard version you may otherwise choose to file.
If you would like to protect different versions of your trade mark and have a limited budget, applying to register a series mark could be a good option for you. There may also be nuances in the trade mark systems of other countries (where series applications/registrations are not recognised) that allow you to ‘consolidate’ your protection.
In South Africa, for instance, you can file a translation (or multiple translations) of your trade mark in the same application. To illustrate: if I owned a publishing company, I could apply to register the English ZIETSMAN PUBLISHERS, the Afrikaans ZIETSMAN UITGEWERS and the Zulu ZIETSMAN ABASHICILELI in a single class 41 application. This would be done by entering a multilingual endorsement when filing the application.
Our IP team would be happy to advise you further on countries where a series application/registration is possible. We can also assist with filing strategies in countries that do not allow series applications/registrations.