Comic Enterprises Ltd v Twentieth Century Fox Film Corporation  EWCA Civ 455
The Court of Appeal has recently given its decision on the remaining question in the trade mark dispute over the hit TV show Glee, deciding that the availability in the UK of series marks is compatible with EU law, despite there being no reference to them in the Trade Marks Directive (or the EU Trade Mark Regulation). It has been reported that Fox may seek permission to appeal to the Supreme Court. If permission were to be granted, there could also be a request to refer this issue to the Court of Justice of the European Union (the Court of Appeal refused to make a reference).
The infringement and passing off findings
We discussed the Court of Appeal’s decision on infringement and passing off in the February 2016 edition of Inside IP. The Court decided that Fox’s use of ‘glee’ infringed Comic Enterprises’ UK mark. In particular, the Court said that Comic could rely on evidence of ‘wrong way round’ confusion: consumers were aware of the TV show first, and were confused when they saw Comic’s mark, rather than being aware of Comic’s mark first. The Court concluded that it did not matter that this evidence was the ‘wrong way round’ as all that was necessary was a likelihood of confusion in the light of a defendant’s actual and threatened activities. The Court went on to decide that the use of ‘glee’ was also detrimental to the reputation or distinctive character of Comic’s marks, but that there was no passing off.
The arguments about series marks
Comic’s mark is a series of two device marks, each with the words ‘the glee CLUB’ in the same script and in a cone of light from a spotlight (the first mark claims the colours red, black and white):
Fox argued that Comic’s mark was invalid because the provision in UK trade marks law which allows series marks to be registered (section 41 of the Trade Marks Act 1994) was incompatible with the Trade Marks Directive and specifically, with the requirement that a trade mark must be ‘a sign’ in the sense of being a single sign and capable of being ‘graphically represented’. In a line of cases, the Court of Justice of the European Union (CJEU) has determined that the graphical representation of a sign must be self-contained, durable, clear and precise, and must be easily accessible and intelligible such that the authorities and economic operators can and will unambiguously and reliably perceive the sign in the same way.
What is a series?
A series of marks can be registered at the UK Intellectual Property Office (UK IPO). To be a series, the marks must resemble each other as to their material particulars and differ only as a result of non-distinctive character which would not substantially affect the identity of the trade mark. Essentially, there needs to be a ‘relatively high degree of homogeneity’ between each of the marks (Digeo Broadband Inc'sapplication).
An application for a series can include a maximum of six marks (the first and second marks are included in the application fee; additional marks in the series each have a fee of £50). Prior to 2009, there was no limit to the amount of marks that could be included in a series and so there are some series marks on the Register that have many hundreds within the series. In 2009, however, the rules on series marks were revised. As well as limiting a series to six marks, applicants are no longer able to ‘divide’ out the series into separate applications if there is a challenge to the series. They can, of course, delete a mark from the series and re-file the application, but will lose the original application date.
The Court of Appeal (the judgment was given by Kitchin LJ) agreed with the UK IPO that a series is a bundle of separate and individual trade marks (albeit under a single registration number), each of which must comply with the requirements for protection in the Directive, and each of which is individually entitled to protection.
The Directive imposes stringent requirements on what can be registered i.e., as to the nature of a sign, and the CJEU has set out the necessary requirements of clarity and precision. However, the Court said, the Directive is not concerned with the ‘procedural machinery’ of applications and registrations, which are for Member States to determine. Specifically, there is nothing in the Directive governing the form of trade mark registrations and, as an administrative provision, section 41 therefore falls outside the Directive’s scope. Indeed, the Court said, the provision is intended to facilitate the effective operation of the application and registration systems, not to create a new and sui generis kind of trade mark.
The Court therefore rejected Fox’s argument that a series registration is, in essence, a single mark consisting of a number of signs. Fox further argued that it was necessary to identify a 'single point of comparison' between all the marks in the series and the mark of any third party, but that this was an inevitably uncertain exercise and contrary to EU law. The Court also dismissed Fox’s secondary argument that, if a series mark is a bundle of individual marks, the way in which they are presented in the Register is misleading and contrary to EU law.
In reaching its decision, the Court reviewed a number of previous cases on series marks. In particular, it concluded that Arnold QC (as he then was, when sitting as an Appointed Person in the UK IPO) had been wrong in his decision in Sony Ericsson to characterize the registration of a series as a number of different manifestations of what is in essence the same trade mark (an approach followed by both Birss J in Thomas Pink v Victoria’s Secret and by the trial Judge in this case).
WHY IS THIS IMPORTANT?
Whilst the 2009 changes diminished the usefulness of series marks somewhat, their availability has been a significant benefit of the UK system, compared to the European Union Trade Mark (EUTM) where series applications are not possible. Brand owners with series marks will therefore welcome the Court’s decision. However, as Fox may seek permission to appeal to the Supreme Court, the legitimacy of series marks has not yet finally been determined.