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Did you know you can 2-in-1 your trade mark?

Tali Blecher

Tali Blecher

Remember this?

 

“Got too much you’re busy doing / To fuss around with your shampooing”. It’s like they read my mind!

Back in the 80s, the concept of combining two consumer products into one was pretty cutting-edge.  But it wasn’t actually revolutionary. The Australian Trade Marks Act has allowed trade mark applicants to combine multiple marks into a single “series” application since 1955. And series trade mark applications remain a feature of Australian trade mark law to this day.

What’s a series trade mark application? Why should I care?

A series application is a fancy name for a trade mark application comprising more than one trade mark. The main benefits of filing for a series are:

  • cost savings on filing (filing one series application is cheaper than filing multiple individual applications);
  • cost savings on renewal (ditto);
  • administrative convenience associated with having multiple marks under the same registration number; and
  • management of non-use exposure by extending protection to variations of the same mark, including colour variations.

Examples of valid series

The Australian Trade Marks Act prescribes strict and finicky rules governing what is and is not a valid series. But the gist of it is that where two trade marks are highly similar, they could qualify for inclusion in a series application.

Here are some examples of valid series registrations (note the similarities and differences):

Examples of invalid series

And here are some invalid series applications that were not accepted (consider why):

If you or your client are tossing up between which variant of a mark to file for – ask us first. You mightn’t have to choose.

 

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George is amazing. She can translate the impenetrable legal jargon of a publishing contract with seamless clarity and has a vast knowledge of publishing. She has negotiated on my behalf, producing outstanding results leaving me with more time to get on with the creative stuff. Her personal encouragement and commitment to the arts is all part of ensuring the best outcome for the artist.
Sue deGennaro - Children’s book illustrator
George represented me in my copyright case against Target Australia. A genuine David versus Goliath moment. Mostly individual artists do not have the capital to run a case like this and it was George’s steady, calm and generous approach that steered me through. She is professional in her engagement but also down to earth, super organised and diligent in her research and attention to detail.
Jon Campbell – Artist
George has provided me with outstanding, practical and effective legal advice. George has written copyright and commission agreements, subcontractor agreements, engaged in contract negotiations and successfully negotiated a number of copyright infringement settlements within Australia and internationally. George’s advice, guidance and professionalism has been invaluable to my artistic practice and I look forward to working with her for many years to come.
Esther Stewart – Artist
The most important things for me with an external lawyer are trust, honesty and the courage to tell me what I need to hear even if it’s not what I want to hear. Joel ticks all of those boxes. He also has the ability to understand needs across a variety of different businesses and sectors, he’s responsive and last but not least, I enjoy working with Joel. I’d recommend him to anyone looking for an Australian IP lawyer.
Ron Fuchs, Managing Director, FH Distribution, Singapore
We like Joel because we were able to form a good relationship with him quickly in the early days – he is easy to work with and we get on well. He gives us good advice and always helps us find a solution to whatever we need. And he’s fast and responsive – that’s really important to us because we constantly come up with new ideas for restaurant names and want to protect them quickly.
David Loh and Louis Kuo, Melbourne restaurateurs
We engaged George to represent us in a trade mark dispute in the Federal Court after she was referred to us by a TM attorney. In all of our dealings, George was always trustworthy and professional. She provided clear legal advice and strategy that considered our values and desired outcomes. George was engaged and responsive in the process alongside us at all times in a highly organised and timely manner. We highly recommend her.
Eva Nikias – Owner, La Siréne Brewing Co.
Joel understands retail and how IP fits into our business. I would recommend him to any other retailer who is looking for common sense guidance when it comes to protecting their IP and defending themselves against outside threats. Joel has gone to a lot of trouble to understand our business and its priorities, risks and people. I know that I can count on him to deliver clear and concise advice, whether it’s to our senior management, buyers or back-end staff.
Leigh Gratzer, General Counsel, Spotlight Group
Joel is the sort of external lawyer every in-house lawyer wants. I trust him not only to get the answer right, but to explain it in a way that stakeholders will understand. I also know that when I contact Joel he will be responsive, fast and cost effective. And I like him personally too.
Jessica Ransley, Legal Counsel, Spotlight Group
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