UK: Trade Marks Registered As A Series Are (Glee-Fully) Compatible With EU Law Says The Court Of Appeal

The Court of Appeal has held that the practice of registering trade marks together as a series does not contravene the EU requirement that a trade mark must be capable of being graphically represented in a clear, self-contained, easily accessible, intelligible, durable and objective manner. The decision removes the uncertainty over the validity of tens of thousands of UK marks registered in this way, and means that this registration practice, along with the associated price discounts currently offered by the UK IPO, can continue.

The Court of Appeal's 25 May 2016 decision in Comic Enterprises v Twentieth Century Fox also marks another victory for Comic Enterprises Limited ("Comic") in its long-running dispute with media giant Twentieth Century Fox ("Fox") over the TV show "Glee". Partner Cerryg Jones and Senior Associate Nick Smee advised Comic, with Douglas Campbell QC acting as counsel.


Comic is the registered owner of the series of two marks depicted below, which it has used since 1999 in relation to its live comedy and music venues.

Comic brought trade mark infringement and passing off proceedings against Fox in September 2011. In February 2014 the High Court gave judgment, finding that Fox had infringed Comic's marks, but that its activities did not amount to passing off. We reported on this judgment here.

Fox appealed the decision. In February 2016, the Court of Appeal upheld the High Court's findings, as we reported here, on both trade mark infringement and passing off. However, this left one final issue to be heard and decided, which Fox had initially raised at the first instance trial and reserved to appeal.

The arguments

Fox's case can be summarised as being that Comic's trade mark, being a series mark, is not "a sign", in the sense of being a single sign, and/or is not capable of being "graphically represented" within the meaning of Articles 2 and 3 of the Trade Mark Directive.

These requirements of EU trade mark law were interpreted by the Court of Justice of the European Union in a series of decisions dealing with 'exotic' marks, starting with Sieckmann v Deutsches Patentund Markenant. The decisions made it clear that a 'sign' must be capable of being "represented graphically" in a clear, precise, self-contained, easily accessible, intelligible, durable and objective way. The recent amendments to the EU Trade Mark Regulation include express wording to reflect these requirements, stating that a sign must be capable of "being represented on the register "in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor". Series marks fell foul of these requirements, so argued Fox.

Following the reasoning of Richard Arnold QC (as he then was) in Sony Ericsson (O-138-06), Fox contend that series marks took effect as a registration of a single trade mark. Mr Arnold had noted in particular that the concluding words of section 41(2) of the Trade Marks Act, which governs the registration of marks as a series, refers to the identity of the trade mark. It followed that it was necessary to identify a "single point of comparison" between all of the marks in the series for the purpose of assessing infringement. Fox argued that this was inevitably an uncertain exercise and so was contrary to the established EU principles.

Given the potentially widespread repercussions of this issue, the Court of Appeal invited the Comptroller-General of Patents, Designs and Trade Marks to attend the hearing. The Comptroller argued that a series of trade marks is actually a bundle of individual trade marks, each of which must comply with the requirements for protection set out in the Trade Mark Directive, and each of which is individually entitled to the protection afforded to every trade mark under EU law.

In response to this, Fox argued (in the alternative) that, should the Comptroller's interpretation of marks registered as a series be preferred, the form in which all such marks are presented in the trade mark register renders them misleading and is contrary to EU law. Fox submitted that the presentation of trade marks together under a single registration highlights and stresses the existence of the marks as a family and so emphasises their common elements to a much greater extent than if they appeared on the register separately.

Fox invited the Court of Appeal to make a reference to the Court of Justice in respect of both of the issues the subject of its arguments.

Comic adopted the same view as the Comptroller, but maintained in the alternative that, if series marks did take effect as a single mark, they still satisfied the EU requirements. It further argued that any deficiency could be remedied by deleting either of the two marks in its series.

The decision of the Court of Appeal

The Court of Appeal agreed with the Comptroller's interpretation of the legislation. It held that a series of trade marks gives rise to a number of individual trade marks, each of which is registered, albeit under a single registration number.

In reaching this conclusion, the court considered many factors, including the wording and structure of the Trade Marks Act. In particular, s.1 defines a trade mark as "any sign" and not "a series of signs", while s.41 is clearly expressed to be a supplementary provision intended to facilitate the effective operation of the application and registration systems, and does not purport to create a new and sui generis kind of trade mark. The words in s.41, referring to "a series of trade marks", were consistent with this interpretation and the use of "trade mark" in the singular at the end of s.41(2) was too flimsy a basis for contending that a new kind of right was being created.

The Court of Appeal also disagreed with Fox's alternative argument. The circumstances in which marks could be considered as a "family", which had been decided previously by the Court of Justice in Il Ponte, applied in the same way to marks registered separately as to those registered as a series. The court saw no difficulty in such assessments being made in the future.

In reaching these conclusions the Court of Appeal noted that matters of registration procedure and the form of registration are not harmonised by the Trade Mark Directive. Consequently there was no scope for a reference to the Court of Justice.

Concluding comment

This decision marks an important victory for Comic in its long-running dispute with Fox.

The decision is also expected to be widely welcomed by brand owners holding (or interested in holding) UK trade marks registered as a series. By confirming the validity of this procedure, the administrative and cost savings can be expected to continue to benefit brand owners operating across a wide range of industry sectors.

View the final judgment in full.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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