Series marks held compatible with EU trade mark law

Earlier this year, we discussed the ongoing “Glee Club” trade mark saga between Comic Enterprises Limited and 20th Century Fox Film Corporation (Trade mark win for the little guy – the “Glee Club” saga continues).

Following on from the Court of Appeal decision in February, where the Court of Appeal upheld the earlier findings of the High Court, the court ruled on a final issue which Fox had raised at first instance and reserved the right to appeal.

A series mark or a series of marks

The “Glee Club” trade mark, on which Comic Enterprises had based its case against Fox, is registered as a series mark:
https://www.ipo.gov.uk/trademark/image/GB50110000002200698.jpg

Fox argued that, because Comic Enterprisers’ trade mark was a series mark, it was not “a sign” within the meaning of Articles 2 and 3 of the Trade Mark Directive (i.e. because it was not a not a single sign capable of being represented graphically).

The EU Trade Mark Regulation states 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. Fox argued that series marks did not comply with this requirement because the scope of the subject matter to be protected was not clear and precise.

The Comptroller-General of Patents, Designs and Trade Marks

Because of the significance 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 mark 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, individually, is entitled to trade mark protection under EU law.

Fox disputed this view arguing that the presentation of the trade marks in the series under one registration stressed the fact that the trade marks existed as a family of trade marks and emphasised their common elements to a much greater extent than if they had been registered separately. Comic Enterprises agreed with the views of the Comptroller and argued in addition that, even if the series mark did take effect as a single trade mark, any deficiencies could be remedied by deleting either trade mark in the series.

The decision of the Court of Appeal

The Court of Appeal accepted the views of the Comptroller that series marks amounted to a number of individual trade marks, each of which is afforded individual protection, albeit under a single registration number.

Fox had invited the Court of Appeal to make a reference to the EU courts in respect of this issue, but the court noted that matters of registration procedure and form of registration are not harmonised by the Trade Mark Directive and, accordingly, there was no scope for a reference to the Court of Justice of the EU.

Briffa comment

This is a significant victory for Comic Enterprises in the context of its long-running trade mark battle with Fox. However, the broader significance of the decision is that it removes any uncertainty over the validity of the tens of thousands of trade marks registered as series marks in the UK and confirms that this registration practice can continue for the benefit of brand owners across the UK.

Briffa advises on all aspects of contentious and non-contentious trade mark law and practice.