Under general rule, if you have a few trademarks with different designs, you should file a separate application for each of the trademark. However, this would multiple the filing costs according to the number of designs.
Guess what? Yes, you may consider Series Mark Registration!
If you are planning to register a few trademarks, this filing strategy may be just right for you.
The good news is, if the designs of the trademarks are closely similar to each other, it is possible to register a series of trademarks under a single registration in Malaysia. The better new is, this approach would substantially reduce the filing costs!
What is Series Mark Registration?
Series mark registration is a trademark registration which enables the applicant to register a number of similar trademarks in single registration. In Malaysia, a series mark registration can consist of up to six trademarks and each mark may be used independently.
The key advantage of series mark registration is definitely cost-saving, where you are allowed to register multiple trademarks which are looking alike in one registration, instead of separating the trademarks into multiple applications which would incur substantially higher registration cost and renewal costs at later stage.
What are the Requirements of Series Mark Registration?
The reality is, not all trademarks are eligible for series mark application. A series mark application is acceptable if the trademarks meet all the requirements below:-
Resemble each other in material particulars; and
Differ only in respect of one or more of the following matters:
Statement or representations as to the goods or services in relation to which the trademark are used or intended to be used;
Statement or representations as to number, price or quality;
Standard fonts which does not substantially affect the identity of the trademarks; or
The colour of any part of the trademark
(Section 21(1) of the Malaysian Trademarks Act 2019)
For clearer picture, below are some examples of trademarks that are eligible for series mark application:
Example 1: Resembling each other but differ in positioning.
Example 2: Resembling each other but differ in colour.
Example 3: Resembling each other but differ in letter casing.
Series Mark Registration in Foreign Countries
However, not all countries provide the option of series mark registration. In this case, you can only file the trademarks separately in different applications in order to secure your rights comprehensively.
Questions? Contact Us for Free Consultation!
Not sure if your trademarks are eligible for series mark application? Contact us today and let us take care of your trademark so that you can concentrate developing your business!
Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
IP Executive
Bachelor of Communication
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.
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