Registry changes examination practice for trademark series

United Kingdom

The UK Trademark Registry has published a notice setting out its new practice of examining applications to register a series of trademarks in a single procedure.

The registry requires that in order to qualify as a series, the trademarks must:
  • resemble each other;

  • not comprise elements that, when considered separately, would be regarded as having distinctive character; and

  • not comprise elements that, in the context of the whole, substantially affect the identity of the marks.

The visual, aural and conceptual identity of each of the marks must be substantially the same. The test is not whether the marks would be regarded as confusingly similar.

Thus, the registry considers the following as possible series of trademarks, among others:

  • marks that include numerals if they are not separate from the name, as they could be seen as model numbers (eg, FENTON 1 and FENTON 2);

  • common misspellings if they are visually similar (eg, LODGEMENT and LODGMENT);

  • highly-distinctive house marks (eg, XEROX COPIER and XEROX COLOUR LASER);

  • domain name suffixes where the suffixes are well known and do not affect the identity of the marks (eg, SHADWELL.COM and SHADWELL.CO.UK);

  • geographical names where they are non-distinctive for the goods concerned;

  • marks containing a distinctive element if that distinctive element is placed before descriptive elements (eg, EAR FINANCIAL and EAR INSURANCE); and

  • one mark made of conjoined words and the other made of separate words (eg, ROOMLOCK and ROOM LOCK), provided the identity remains the same.

The registry will examine each mark to determine whether they form a series. If the examiner finds that one or several of the marks do not constitute a series, he or she will indicate whether the remaining marks form a series. An application that does not constitute a series will not be examined. Applicants may appeal against objections of this nature or amend their application by deleting a mark or dividing the application.

Jason Rudkin-Binks, Hammonds, London

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