UK To Abolish Series Trademarks

With UK series trademarks, applicants could acquire protection for slight variations of their brand identity in a single application. However, the UK government has now announced plans to discontinue their use. Alice Wright explains why and what this will mean for brand owners seeking to protect their rights in the UK.  

The United Kingdom has long maintained a highly distinctive and user-friendly mechanism within its domestic intellectual property (IP) framework: the series trademark. For decades, this system has allowed businesses – ranging from local startups to multinational corporations – to secure protection for slight variations of their brand identity under a single application. 

However, as part of the sweeping digital transformation and modernisation efforts at the UK Intellectual Property Office (UKIPO), the UK Government has announced its intention to discontinue the series trademark service for new applications. While an exact legislative date for the final sunsetting of the service remains to be finalised, the transition marks one of the most significant procedural shifts in UK trademark practice since the enactment of the Trade Marks Act 1994. 

This article explores the historical purpose and legal mechanics of series trademarks, examines the reasons behind the UKIPO’s decision to abolish them, and analyses the strategic and financial impact this reform will have on brand owners filing in the UK. 

The purpose and history of series trademarks

Historically, the primary purpose of a UK series trademark application was to offer a cost-effective and administratively streamlined path to protect minor variations of a brand name or logo without forcing the applicant to file separate, costly standalone applications. 

The statutory framework 

Under Section 41(2) of the UK Trade Marks Act 1994, a series of trademarks is defined as: 

"...a number of trademarks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trademark." 

Under the current rules, an applicant can include up to six variations of a trademark in a single application. While the first two variations are covered by the standard application fee, any additional variations (up to the maximum of six) incur a modest, non-refundable administrative fee. 

The strict legal tests for a valid series 

Despite the commercial appeal of bundling variations, the legal threshold for what constitutes a valid "series" is very high. In the landmark case Logica BL O/068/03, the Appointed Person established a strict three-part test that examiners must apply sequentially to determine if a series is: 

• 1. Resemblance of material particulars: The marks must physically resemble each other in their essential visual, aural, and conceptual features. 
• 2. Non-distinctive differences: Any differences between the marks must be strictly confined to elements that are entirely devoid of distinctive character when viewed independently. 
• 3. No substantial effect on identity: When the marks are considered as a whole, the variations must not alter the core commercial identity of the trademark. 

Practical examples of acceptable vs unacceptable series 

The UKIPO's Manual of Trademarks Practice provides clear boundaries for what examiners will accept: 

 —Acceptable series: 

• Numerals as model numbers: Variations such as FENTON 1, FENTON 2, up to FENTON 6 are acceptable for goods like television apparatus, because the changing numerals are perceived merely as non-distinctive model indicators following a strong, distinctive brand name. 
• Minor spelling/Punctuation variations: Minor spelling differences that do not affect the phonetic or conceptual identity – such as MERKINS LODGEMENT CENTRE and MERKINS LODGMENT CENTRE – are acceptable. 
• Conjoined words: Combining words versus separating them with a space (e.g., Roomlock and Room Lock) is generally acceptable as they are perceived identically by the consumer. 

—Unacceptable series: 

• Altering the distinctive element: Series like CH101, CH102, and CH103 for guided missiles are unacceptable because the letters "CH" are not seen as a separate brand name, meaning the changing digits alter the core identity of each mark. 
• Varying the size of distinctive features: Substantially altering the size or dominance of a key distinctive element, such as shrinking the word ASDA so it is overshadowed by other text, is not allowed. 
• Conjoining misspellings that alter meaning: Variations like Growright and Gro Wright are rejected because Gro and Wright evoke a different visual and conceptual surname identity compared to the conjoined descriptive term Growright.

Why series trademarks are being discontinued 

The decision to abolish the series trademark system was not made in a vacuum. It emerged as a core policy outcome of the UKIPO’s Transformation II Consultation. While the system worked well for experienced IP practitioners, the UKIPO identified several systemic problems that made the service unsustainable in a modern digital environment. 

The decision to abolish the series trademark system was not made in a vacuum. It emerged as a core policy outcome of the UKIPO’s Transformation II Consultation. While the system worked well for experienced IP practitioners, the UKIPO identified several systemic problems that made the service unsustainable in a modern digital environment. 

A. High objection rates and administrative complexity

The primary driver for the abolition of series marks is the high rate of procedural objections. Because the legal boundary of what constitutes "non-distinctive matter" is highly technical, applicants (particularly small and medium-sized enterprises (SMEs) filing without legal representation) frequently misunderstand the requirements. 

According to UKIPO data, almost 40% of series applications filed without legal representation received a formal objection from the UKIPO. This high objection rate represents an onerous administrative challenge for the UKIPO Registry, requiring examiners to engage in extensive correspondence, issue detailed examination reports, and conduct hearings to resolve invalid series claims. 

B. Financial disadvantage to unrepresented applicants

Under UKIPO practice, the additional fees required to file more than two marks in a series (currently £60 per additional mark) are non-refundable, even if the examiner ultimately rejects the series as invalid. Unrepresented applicants who erroneously try to bundle materially different marks (such as entirely different logos or distinct words) often end up losing at least some of their application fees. This has meant that rather than saving money, the availability of the series mark service often inadvertently placed unrepresented applicants at a financial loss. 

C. Global incompatibility and the Madrid Protocol

Series trademarks are a historical anomaly on the global stage. Major IP jurisdictions, including the European Union Intellectual Property Office (EUIPO) and the United States Patent and Trademark Office (USPTO), do not recognise the concept of series filings. This often creates friction when UK businesses attempt to protect their marks internationally.

Under the Madrid Protocol, an international application must be based on a single "basic mark" registered in the country of origin. However, because WIPO does not support series marks, a UK applicant using a domestic series registration as their basis must choose a single variation to act as the basis for their international designation. 

Furthermore, foreign IP offices regularly raise complex queries and objections when confronted with priority claims originating from a UK series mark. Eliminating series marks will more closely align UK practice with international norms, simplifying cross-border filing strategies. 

What will be the impact of abolishing series marks on UK trademark filing?

The removal of the series mark service will reshape how brand protection is secured and managed in the UK. 

No retrospective impact on existing marks 

A critical point of reassurance for brand owners is that existing series trademark registrations will remain fully valid and enforceable. The UKIPO has confirmed that all currently registered series marks will be maintained, and owners will be able to renew them as a series every 10 years. Similarly, any applications pending before the official implementation date will continue to be examined under the old framework. 

Strategic shifts in brand filing 

Once the abolition takes effect, however, applicants will no longer be able to bundle variations of the marks in a single application and will have to adopt a more disciplined, prioritised approach to filing: 

• 1. Prioritising the "core" mark: Instead of registering a logo in full colour, greyscale and black-and-white within a single series, businesses will need to identify their primary commercial representation. Typically, this would be a black-and-white or greyscale version, since it usually provides protection for different colour variations. However, when a logo is predominantly in use in one colour, filing in those specific colours may be more commercially advantageous.
• 2. Multiple standalone filings: If a business requires legal protection for distinct visual variants of their mark, they will now need to file multiple individual applications. 

Financial decisions for SMEs 

The most immediate impact will be felt by SMEs and startups operating on tight IP budgets. Under the current series system, securing protection for minor variations was highly economical. In the future, filing three separate variations will require three separate application fees. 

While some analytical studies of comparable jurisdictions (like France) suggest that most businesses ultimately only use and protect a single core variant of their mark, those who rely heavily on multiple colours or structural variations will face higher upfront filing costs and increased renewal fees down the line. 

Streamlined registry and legal certainty 

From a structural perspective, the trademark register will become significantly more transparent. The abolition of series trademarks will eliminate the ambiguity surrounding whether a registered variant actually covers a specific commercial use. For third parties conducting clearance searches, a register composed strictly of single, clear, standalone representations will greatly reduce the risk of disputes regarding the scope of a registered trademark right, and this will in turn act to improve overall legal certainty. 

Key takeaways for trademark applicants in the UK

The upcoming retirement of the series trademark service represents a major milestone in the UKIPO’s digital transformation. While the loss of this unique domestic tool may cause a temporary adjustment period for UK practitioners and budget-conscious SMEs, the long-term benefits of a simplified, internationally aligned and less objection-prone system are clear. 

Brand owners should use the remaining transition period to audit their active trademark portfolios, identify any critical brand variations that should be registered under the current cost-effective series rules, and prepare to transition to a single-representation filing strategy in the near future.