One of the great unsung benefits of filing a UK trademark, as opposed to a CTM, was always the series provision. Under it, an applicant could file for a series of marks "not differing from each other in their material particulars," without additional cost. The provision enabled businesses to protect, in a single filing, a number of marks that were essentially the same but differed in minor respects during use.
Where marks of uncertain registrability were concerned, however, the series provision offered another advantage: it enabled applicants to file for a mark on its own, and with other distinctive matter, in a single application without additional cost. Such marks would not form a true series and would not be allowed to proceed to registration. However, they would be examined, and on the basis of that an applicant could decide which marks to delete or divide out into separate applications, without losing the original filing date, and without the expense of multiple application fees at the outset for marks that might ultimately be rejected as non-distinctive or descriptive.
OHIM has never offered anything comparable, and for businesses with specific interests in the UK, the UK-IPO practice on series marks was practical and highly cost-effective, both for true series marks and for marks of borderline registrability, where a budget-friendly filing strategy with a built-in fallback was needed.
In October 2009, however, the series marks provision was amended and the new rules severely limit its usefulness. In particular, no more than 6 marks will be permitted in any given series; an additional fee of £50 will apply to every mark in the series beyond two, without the possibility of refund if marks are later dropped; and finally, most notably, it will no longer be possible to divide marks out from a series into separate applications. Marks that are not accepted or not regarded as forming part of a true series can only be deleted. They can be re-filed but will not bear the original filing date, as they would in a divisional.
Although the IP profession in the UK was consulted on other changes introduced last autumn, the alterations to the series practice came as a surprise.
The IPO may have been motivated in part by the impression that some users abused the system by filing excessively high numbers of marks in a series. Each mark in a series must be examined and the absence of corresponding remuneration in the form of further filing fees meant that the use of examiner resources was out of proportion to the fees being paid for them. However, the abolition of the ability to divide marks out from a series into separate applications retaining the original filing date seems a draconian response, when the introduction of a more substantial per-mark supplemental fee would arguably have achieved the same objective.
Whether marks form a true series is often arguable and under the new practice, many who legitimately seek to protect what they regard as a true series will lose the original filing date for rejected marks if the examiner disagrees. Such applicants will have to re-file fresh applications for any marks rejected from the series without any chance of obtaining a refund of the additional series uplift. The need for such further filings is an additional burden on industry at a time when budgets are already constrained, and discourages trademark filings at a time when building and protecting strong IP rights to keep competitors off the grass is at its most important.
At a stroke, therefore, the UK-IPO has discarded a practice that not only greatly benefited its customers, but which enhanced its attractiveness and competitiveness as an alternative to OHIM for businesses with specific interests in the UK. Given OHIM's own aggressive fee reductions last spring, the UK-IPO needs all the help it can get. The series changes run counter to this; time will tell whether they translate into a competitive edge for OHIM in relation to applicants with interests in the UK.