Ireland on watch as UKIPO prepares to drop ‘series’ trade marks

The UK Intellectual Property Office (UKIPO) will stop accepting series mark applications from the end of this year, bringing it in line with the European Intellectual Property Office (EUIPO).

Currently companies in the UK can file six variations of a trademark with non-distinctive changes – such as colours – as part of the same application and have to pay only one application fee for this, but the rules are set to be streamlined within the next few months.

Maureen Daly, an IP law expert and partner at Pinsent Masons, said the move would widen the IP regulation gap between the UK and Ireland.

“While series applications can be tricky as they can give rise to objections if they are not properly drafted, they do provide brand owners – particularly SMEs – with flexibility as well as costs savings,” said Daly

“This new development further sets the UK apart from Ireland.”

The changes come as UKIPO looks to simplify the registration process for trade marks, with the current series mark system – which allow for up to six changes that do not substantially change the identity of the mark, such as colours or minor spelling variations – but this has created potential delays for filings over confusion as to what counts as a series.

While the EUIPO does not allow series marks, Ireland’s national trade mark system currently does – but Daly warned that this may change depending on how reaction to the UK’s shift in approach lands with users of the service.

She added: “While the Irish IP Office has not announced any plans to remove series marks, Irish businesses and legal advisors should monitor this because if the UK experience shows minimal negative impact, the Irish IP Office might consider adopting a similar move in the future.”