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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