While recently carrying out research on the possibility of making post-filing amendments to trade mark applications and registrations, I was starkly reminded of the importance of verifying information obtained from text books and other secondary sources against primary sources.

 The Trade Mark Handbook advises that, where an objection is raised to a “series” application, an applicant has two remedies available in accordance with rule 21 of the Trade Mark Rules. The first option is to delete a member of the series objected to.  The second option is to divide the application into different members of the series and prosecute them as separate applications on payment of additional application and division fees. To divide the application, The Trade Mark Handbook advises readers to complete Form TM12 (see paragraphs 110-005 to 110-006 of The Trade Mark Handbook).  These paragraphs were last updated in August 2006 and March 2008 respectively.

 As anyone will know simply by looking at Form TM12, since 1 October 2009, this form can no longer be used to divide applications for a series of marks filed on or after that date.  In fact, in order to reduce the potential abuse of the series mark system, the possibility of dividing series mark applications has been abolished altogether.  The legislation was changed in the Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009 (SI 2009 No 2089). As the explanatory notes state:

"(3)     (…) The right to request a division of an application for a series of trade marks into separate applications is removed in relation to applications filed on or after 1st October 2009."

This is unlikely to be news to any seasoned trade mark practitioner.  However, it is surprising to see that The Trade Mark Handbook is not the only source of information that has not been updated following this change in procedure back in 2009. Both the Fifteenth Edition of Kerly (revised in 2011) and the Fourth Edition of Morcom, Roughton & St Quintin (revised in 2012) also advise readers of the possibility of dividing series applications even though these editions were released well after the implementation of this change.

Considering that these leading text books are full of useful information and that this is a relatively minor procedural point, the editors and publishers may well be forgiven.  However, it does remind practitioners and scholars alike that one should never cut corners by simply relying on secondary sources, such as text books, when preparing client advice, writing articles or working on a thesis. 

Thanks, Désirée, for this post.  The MARQUES LinkedIn Group will have a chance to discuss it, so if you'd like to add your comments you know where to go!