In this publication, more information about the series of trademarks (or the so-called family of trademarks) will be provided. In the series of trademarks, there is a sufficient degree of connectivity between the marks which leads to the possibility for consumers to believe that the goods and/or services originate from the same or economically related persons or undertakings. Determining whether there is a series of marks is most often the case when an opposition is filed based on several earlier marks, which earlier marks have characteristics which justify the marks being assigned to a separate ‘series’ or’ family ‘of marks, which is likely to cause confusion, since the mark at issue may be linked to the earlier marks which are part of a series of marks. In most cases, practice shows that the trademarks that are part of a series of trademarks are registered marks, but there may also be unregistered marks in the series of marks.
In which cases is it most commonly assumed that there is a series of trademarks/family of trademarks?
In the first place, the proprietor of a series of earlier marks must provide evidence, before the expiry of the period for justifying the opposition, of the use of the marks belonging to the family of marks or, if not for all marks, at least for three of them (if only two of the trademarks are proven to be used, no conclusion can be drawn for the presence of a family of marks). In order to the existence of a series of marks to be acknowledged, the evidence must unequivocally prove the fact that the marks which are part of the family were used by their proprietor in such a way and to such an extent that the relevant consumers know the trademark family as designating the goods and/or the services of a particular enterprise.
In the next place, the trademark filed for registration shall be similar to the trademarks in the series of marks and must also have such characteristics as to enable it to be associated with the family of trademarks. There must be a sufficient degree of connectivity between marks that leads consumers to believe that the goods and/or services originate from the same or economically related undertakings. It is necessary that the common element of the contested application and of the family of earlier marks be identical or of a high degree of similarity, and the common element must be distinctive in nature or acquired as a result of use. Also, the common element should be located in the same place in the composition of the marks (for example, only at the beginning or only at the end). Furthermore, the presentation of the common element should be identical or of a high degree of similarity. In a series of marks, when the common element is used systematically together with other minor elements, it is likely that consumers will not be able to pay attention to the insignificant differences and consider that they most likely mean a new product in the product line of the same enterprise.
In the third place, the goods and/or services which the series of marks and the process mark apply to must be identical or of a high degree of similarity. It is important to note here that the goods must be identical or of a high degree of similarity to the goods that are common to all the marks in the series.
Finally, it is important to note that the process mark does not have to be compared individually with each of the earlier marks, which are part of a series of marks, because it can be found that there are no similarities between the marks, which can lead to likelihood confusion. Rather, in the event that the proprietor of the series of marks has proved the existence of a family of marks, he or she shall make a comparison between the process mark and the trademark family as a whole in order to determine whether the disputed mark possesses the characteristics that could cause consumers to make conscious connections with the trademark series.
When is a trademark not perceived to be part of a series of marks?
A series of marks is not considered to exist when the common element has a low degree of inherent distinctiveness. Furthermore, there is no series of trademarks when the other elements of the earlier marks are dominant (have a greater impact) in the overall impression that they create. Finally, when the common element has a different location from its usual position than that in the series of marks and when it has different semantic content, no series of marks is considered to exist.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide more information about the series of trademarks. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP lawyer in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.