The UK Intellectual Property Office (UKIPO) has confirmed that it will no longer permit trade mark applications to be filed as a series in the near term. No official date has been announced, but the phase out may begin towards the end of 2025. This change will align UK practice more closely with international norms and comes as part of a wider transformation of the UKIPO’s services.
For businesses that have relied on series marks to protect small variations of their branding within a single application, this represents a significant procedural change. It’s important now to grasp the practical implications and consider the best ways to prepare.
What are series marks?
Under the UK Trade Marks Act 1994, a series of trade marks is defined as a number of trade marks that resemble each other in their essential features, differing only in ways that are non-distinctive and do not substantially affect their overall identity (Section 41(2)).
Series marks have traditionally been a distinctive element of UK trade mark law and are also understood to be available in a number of other countries, such as Australia, Bangladesh, India, Malaysia, New Zealand, Pakistan, Singapore, Hong Kong and Ireland.
In the UK, series marks enable applicants to register up to six marks within a single application, as long as the marks are fundamentally identical and differ only in non-distinctive details. These variations might include differences in colour, punctuation or font style. Some examples of acceptable series marks, taken from the UKIPO’s Manual of trade mark practice, are provided at the bottom of this article. Series marks have even been registered in the form of sound marks. To learn how our trade mark attorneys successfully secured the first-ever series sound mark in the UK, click here.
These examples illustrate that the distinctive components of a trade mark must remain consistent for the marks to be accepted as a valid series. In considering whether a group of marks can be accepted as a series, the primary issue is whether the differences between them alter their identity in a meaningful way. The test is not merely whether the marks might cause confusion if used independently by unrelated entities. Instead, for marks to qualify as a series, any variations must be limited to features that are non-distinctive and must leave the essential character of each mark intact visually, aurally, and conceptually. Even when the marks express the same underlying idea, significant differences in how they look or sound can be enough to break the unity required for a valid series.
In many cases, series marks have provided a cost-effective and administratively efficient route for protecting branding that appears in multiple forms. However, the system has often caused confusion. The threshold for what qualifies as a valid series is high and frequently misunderstood, particularly by unrepresented applicants.
Why is the UKIPO removing the option?
There are two main drivers behind the UKIPO’s decision to remove the option for series marks.
First, the UKIPO is seeking to simplify the trade mark filing process, particularly for applicants navigating it without professional advice. The current series regime is considered to introduce unnecessary complexity and frequently results in procedural objections, which in turn delays examination and increase the burden on applicants. According to UKIPO data, approximately 39% of series applications filed without legal representation were objected to in 2022. This high rate of objection indicates recurring challenges for unrepresented applicants.
Second, series marks are something of an anomaly on the global stage. Most other jurisdictions require separate applications for each variant of a mark. When seeking protection internationally, whether through national systems or via the Madrid Protocol, applicants are typically required to either abandon all but one version of the mark or file separately for each mark in the series in the countries where protection is sought.
There can also be issues with priority claims, as IP offices unfamiliar with the concept of series marks may raise additional queries, which can lead to prolonged correspondence and procedural back-and-forth before a resolution is reached. This process can quickly become inefficient and costly. By moving toward a more internationally consistent system, the UKIPO aims to support businesses in aligning their UK and overseas trade mark strategies more effectively.
What will change?
Trade marks that are already registered as a series will continue to be valid and enforceable under the law, and their scope of protection will not be altered. Similarly, any applications submitted before the implementation date of the new rules will be processed and examined under the existing framework.
However, after the changes take effect, it will no longer be possible to file new series trade mark applications in the same manner. Applicants will need to adapt to a revised system that may limit or redefine how similar marks are grouped or assessed during the registration process. This could impact strategies around brand protection, including associated budgets, as businesses may need to file separate applications for variations of a mark that previously could be registered together under a series. The reform aims to streamline examination procedures and reduce ambiguity, but it may also lead to increased costs and administrative effort for brand owners going forward.
Strategic considerations
For those currently making use of the series system, or planning to do so, the approaching change prompts several practical questions.
In the short term, it may be advisable to file any new series applications before the window closes. Where the relevant marks meet the legal requirements, this still offers a cost-efficient way to obtain broad protection, with series trade marks offering somewhat broader protection by covering slight variations of a core mark, potentially allowing the owner to act against a wider range of infringing signs.
On the other hand, they may expose the owner to additional challenges, particularly since series registrations can increase the risk of opposition or cancellation actions, particularly where some variations are not used in practice.
For example, if a series registration includes four variations of a mark but only two are actively used in commerce after the five-year grace period, the unused series marks may be vulnerable to revocation for non-use. This could reduce the overall effectiveness of the registration and slightly weaken enforcement options (although probably not substantially so, given the requirement that marks must be very close to one another to be a valid series in the first place).
Looking ahead, brand owners will need to adopt different strategies. This could mean filing separate applications for each variation of a mark, whether that be different colour schemes, typographic styles, or alternate word forms. While this approach may increase both costs and administrative workload, it offers greater legal certainty and may ultimately support stronger enforcement.
Some businesses may also wish to revisit the use of black-and-white or greyscale logo filings as a means of attempting to cover multiple colour versions, which should be considered on a case-by-case basis.
Preparing for the change
The withdrawal of series marks will affect both trade mark filing strategies and portfolio management over the long term.
We recommend reviewing any plans to register new marks that might currently qualify as a series. Where appropriate, consider filing under the existing system while it remains available. It is also worth reviewing your current portfolio and identifying where separate registrations might now be more effective.
As ever, tailored advice is key. If you would like to discuss the potential impact of this change on your business or receive support with adapting your strategy, our trade mark attorneys would be pleased to help.
Non-exhaustive examples of acceptable series marks at the UKIPO
The following are examples of series applications which are considered to be acceptable:
FENTON 1
FENTON 2
FENTON 3
FENTON 4
FENTON 5
FENTON 6
MERKINS LODGEMENT CENTRE
MERKINS LODGMENT CENTRE
Xerox Copier
Xerox Laser
Xerox Multipurpose
Xerox Colour Laser
LASTING IMPRESSIONS
LASTING
IMPRESSIONS
!LASTING !
IMPRESSIONS
Chessman
WeAdmire.co.uk
WeAdmire.com
BLINK RIO DE JANEIRO
BLINK MARAKESH
BLINK COSTA BLANCA
Ear financial
Ear investment
Ear insurance
Roomlock
Room Lock
Source: https://www.gov.uk/guidance/trade-marks-manual/the-examination-guide
Written by Jeremy Zerkle, a placement student with us in Munich (at the time of publishing).
