- Background
Back in February, we wrote about a decision of the Court of Appeal, overturning a 2014 decision to find that US Television giant Twentieth Century Fox ("Fox") had infringed the following UK series trade mark, owned by Comic Enterprises Ltd ("CEL") which runs a chain of comedy clubs called "The Glee Club".
One point remained outstanding in the case and the Court of Appeal handed down its ruling at the end of last month.
- Fox's arguments
Fox had argued that the Glee Club trade mark is "liable to be declared invalid under s.47 of the Trade Marks Act 1994 because the said mark, being a series mark, is not a sign (in the sense of being a single sign) and/or is not graphically represented in a clear, precise, unequivocal and/or objective way and it was therefore registered contrary to s.3(1)(a) of the Trade Marks Act 1994". It said that the registration of a series of trade marks is, in essence, a registration of a single trade mark which consists of a number of signs.
Of note is the wording of Section 41(2) Trade Marks Act 1994 which says "A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark".
Fox went on to argue that an assessment of the trade mark and an allegedly infringing sign was problematic because, if the series of marks is in actual fact one trade mark, it is difficult to find a "single point of comparison" between the mark registered and the allegedly infringing mark. As a result, Fox argued that series marks are contrary to established principles of EU law.
- The ruling
The court disagreed with Fox's argument that a series trade mark is effectively 1 trade mark, comprised of numerous signs. It confirmed that s.41 of the Trade Marks Act 1994 and, in particular its reference to "the trade mark" in the singular form, do not purport to create some sort of hybrid trade mark, peculiar to English law. The law merely provides a procedure for registering numerous trade marks.
A series mark is in fact a number of individual, but very similar, trade marks which have been registered using a particular procedure and which are "…as self-contained, easily accessible and intelligible and will be perceived as unambiguously as a trade mark which has been registered on its own".
Because registration procedure and the form of registration are not matters which are harmonised under EU law, Member States are free to exercise discretion. With this in mind, the court ruled that trade mark procedure in the UK and the concept of series marks are "entirely compatible" with EU law.
What a relief!
Postscript
This case was subsequently settled on confidential terms between the parties and the appeal to the Supreme Court was withdrawn.