Series marks or Series of trademarks refer to a plurality of marks which have either a common suffix or prefix. The 'Mc' series in McDonald's is an excellent illustration of a series mark. This family of trademarks includes McCafe, McPuff, Chicken McNuggets, McVeggie, and many others. It is a relatively new concept, however, there are some provisions for it in the Trademarks Act of 1999.
Series marks help form an association amongst the products as they fall within the same family of marks and distinguish them from the other range of products. These series of marks can be registered within one application whereby certain particular characters can be granted additional protection.
FEATURES OF SERIES MARK
An essential feature of a series mark is that they should only differ either in colour, quality, location, place, etc, or even sometimes in goods or services. For example, UberPool and UberEats are both different kinds of services being provided by Uber, thus, the main word ‘Uber’ is present in both the services and it’s an example of a series mark as trademarks resemble each other in material particulars.
Any such variation in material particulars should not affect the visual and conceptual identity of each of that trademark. The effect of this registration can be analyzed on how the consumer reacts to the mark of the goods or service.
The marks in a series may differ as to their punctuation, these can be accepted as long as they don’t alter the visual or conceptual idea behind the series mark completely. For example, ROCK N ROLL, ROCK ‘N’ ROLL as well as ROCK-N-ROLL are all acceptable forms of a series mark as the changes made in the latter two do not substantially change the meaning in which they will be perceived by the consumer.
Another example can be of conjoined words, for instance, words like ‘CATSCAN’ and ‘CAT SCAN’ do not constitute a valid series as the former can have two potential pronunciations and meaning (cats can and cat scan) whereas, the latter can only have one.
The alternative to applying for a series trademark is to apply for multiple trademarks application for each mark or to only apply for a particular trademark, which provides for a more tedious registration process and is uneconomical for the applicant, it also does not offer broader protection.
APPLICATION FOR REGISTRATION OF SERIES MARK
An applicant who seeks registration of his mark has to submit an application on Form TM-A. The description of every mark in the series for the goods or services should be the same, however, the registration of the series mark is on the discretion of the registrar of the series mark. The registrar can reject the application or may accept it conditionally and can ask the applicant to make necessary changes so as to ensure its complete conformity with section 15 of the trademarks act, 1999.
In all the above mentioned cases, it is mandatory for the registrar to communicate any objection or proposed changes to the applicant. The applicant may agree with the observations of the registrar or may submit his clarifications accordingly, failure to respond to him would result in the application being considered to have been abjured.
Any condition or alteration proposed to the applicant should not be of the type that would significantly alter the particulars of the series trademark application, the examiner should not offer to accept the application before the recommended changes have been made in the application. For example, conditions such as ‘the application may be accepted for registration subject to deleting the picture of the tiger appearing on the trademark’ cannot be levied.
SERIES MARK UNDER TRADE MARKS ACT 1999
Section 15 of the Trade Marks Act, 1999 addresses the registration of parts of trademarks and trademarks as a series. When a trademark application includes multiple features and the proprietor claims exclusive rights to each of these features individually, they must seek registration for each part as a separate trademark through series trademark registration. Each mark within the series must have the same goods/services description.
Section 16 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) clearly states that any goods or services identical to another trademark registered under the same proprietor's name or that so closely resembles it that it could deceive or cause confusion if used by someone other than the proprietor, such a trademark must be registered as an associated trademark.
SERIES TRADEMARKS IN OTHER COUNTRIES
The United Kingdom is the only country that has a comprehensive system for series trademarks in the European Union. Data from 2017 has revealed that almost 40% of the total applications do not meet the criteria for a series mark. In order to be acceptable, the series needs to look the same, sound the same and should represent the same ‘idea’, any differences between the two series should be very minor so as to not change the meaning behind them or to confuse the consumer.
A series of more than 2 marks is subject to an additional fee of £50 per mark and is non refundable even if the series trademark is refused.
In New Zealand, the legislature for series marks came into existence with the Trademarks Act 2002. In it, a side by side comparison of the trademarks is done to determine whether they constitute a series. In spite of fulfilling preliminary requirements of a series trademark, each application is measured on its own merits.
CHARACTERS OF THE SERIES MARK
The most important characteristic of a series trademark is that the entire range of a family of a particular series belongs to a single proprietor only and should have a common prefix, suffix or syllable. They all have a common component but also a distinct character to each product.
Series trademarks help create the presence of an enterprise in and outside of the country where it is originally registered. This provision of a series trademark is worthwhile for the family of trademarks by preventing anyone from using a mark having the same characteristicts for any similar goods or services even when the mark is not deceptively similar.
The perception of a consumer regarding a trademark as a series lies in the perception of the family marks by the public at large, which requires that the universal characteristics of the mark such as, their uniqueness, distinctiveness, etc. remains the same and also, that the public should be able to recognize the common element in the family of marks as originating from one enterprise. This recognition can only be established by continuous use of the series trademark.
CONCLUSION
The concept of trademark series is still very young and still undergoing development, India has evolved its legal system with that of the international standards as still a lot of countries do not recognize the concept of a series trademark. It is very important to give recognition to the creators of intellectual property so as to safeguard their interest and encourage their creativity.