AER Series Mark: Priority, Earlier Mark and Division
Fionnula O'Shea filed Irish application No. 2024/06789 on 10 May 2024 for a series of three marks: (1) AER in plain block capitals; (2) AER with a small blue wave device to the right; (3) AER in a stylised font with the same wave device and the colour blue. The goods and services are Class 25 'clothing, footwear, headgear', Class 18 'bags', and Class 35 'retail services relating to clothing'. She claims priority from a US application filed 20 November 2023 for the word mark AER in Classes 25 and 18 only. The examiner objects that the three marks do not constitute a series because the wave device and colour are distinctive additions; the examiner also notes that priority cannot extend to Class 35 and that an earlier Irish mark AERA is registered in Class 25 for clothing. The response deadline is 10 July 2024. Fionnula wants to keep all three versions and all classes, and asks whether she can divide the application.
1. Is the examiner right that the three marks are not a valid series? What are the options?
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The examiner is likely to be right. A series registration requires the marks to resemble each other and to differ only in elements that do not affect the distinctive character of the mark, such as non-distinctive wording or minor colour changes. A small blue wave device is a distinctive figurative element. The stylised font and the colour blue may also add distinctive character. The three marks therefore do not differ only in non-distinctive elements.
The applicant cannot keep all three in one series. The options are:
- Delete marks (2) and (3) from the series and keep the plain word mark AER. This preserves the 10 May 2024 filing date and the priority claim for the word mark.
- File separate applications for the device marks. These will have later filing dates, and they cannot claim the US priority because the US application was for the word mark only. They may still be registrable if the device and stylisation are distinctive.
- File a new application for the word mark before 20 May 2024 claiming US priority, if the applicant wants a clean priority claim unaffected by the series objection. This is tight but possible.
Dividing the application does not solve the series objection. Division separates goods and services, not different marks within a series. The series must be fixed first.
2. What is the correct scope of the priority claim for each mark and each class?
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Priority lasts six months from the first filing. The US application was filed on 20 November 2023, so the priority deadline is 20 May 2024. The Irish filing on 10 May 2024 is within time.
Priority is claimable only for the same mark and the same goods or services as the earlier application. The US application was for the word mark AER in Classes 25 and 18 only. Therefore:
- Word mark AER in Classes 25 and 18: priority can be claimed to 20 November 2023, provided the goods are within the US specification.
- Class 35 retail services: no priority. The US application did not cover retail services. The effective date is 10 May 2024.
- Device marks (2) and (3): no priority. They were not in the US application. If filed as separate applications, their effective date is the later filing date.
The series objection complicates the priority claim because the Irish application is not simply for the word mark. The cleanest course is to keep the word mark in the current application and rely on priority for Classes 25 and 18, while filing separate applications for the device marks with no priority claim. The applicant should not claim priority for Class 35.
3. How should the earlier AERA mark and division be handled?
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The earlier Irish mark AERA is registered in Class 25 for clothing. AER and AERA are visually and phonetically very close: one letter separates them, and both are short, arbitrary words. The goods in Class 25 are identical. The examiner is likely to raise a section 10(2) objection. The applicant's argument that the marks are different is weak. The realistic options are:
- Consent or coexistence agreement from the proprietor of AERA. A written consent letter can overcome the objection if it is clear and unconditional.
- Restrict the Class 25 specification to goods that are less likely to conflict. This may be difficult because 'clothing' is broad and the earlier mark covers clothing. Restricting to, say, footwear may still leave similarity.
- Challenge the earlier mark only if there are real grounds, such as non-use. That is expensive and should not be done without evidence.
- Divide the application. Division can separate Class 35 from Classes 18 and 25. The Class 35 application can proceed on its 10 May 2024 date while the Class 25 conflict is resolved. Class 18 bags may be dissimilar to clothing, so a separate divisional application for Class 18 could also proceed. The divisional applications keep the original filing date for the divided goods.
The sequence should be: fix the series by deleting marks (2) and (3); file separate device applications; divide out Class 35 and possibly Class 18; then deal with the AERA conflict in Class 25 by consent, restriction or evidence. All of this should be done before the 10 July 2024 deadline, with extension requests only if genuinely needed.