Last month
we reported on the Court of Appeal’s decision in the trade mark conflict between Comic Enterprises and Twentieth Century Fox in relation to the latter’s Glee TV series. However, as noted in that post, there is a second issue about a series, namely the validity of the UK provision enabling the registration of “a series of trade marks”. If the Court of Appeal decides that the series mark provision in the UK Trade Mark Act is incompatible with EU law, as requested by Twentieth Century Fox, this may have very wide ranging affects on trade mark law and filing practice and potentially even past registered marks.
Under Section 41 of the UK Trade Mark Act 1994, it is possible to register a series of trade marks in the same registration. The qualification is that the marks in the series “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”. This provision has practical significance allowing protection for multiple “versions” of a mark with a single registration. It also has strategic significance as it enables the applicant to receive the examiner’s view on the registrability of a number of marks before deciding which ones to proceed with. Trade mark owners who secure a series registration are able to rely on any of the marks within the series in infringement proceedings.
In Glee, Twentieth Century Fox has gone beyond arguing that the registration it is claimed they infringe is invalid under inherent grounds such as non-distinctive or descriptive or that it should be cancelled for non use. They contend that it is invalid as the provision under which it was allowed is itself incompatible with the EU Harmonisation Directive - specifically that that directive requires a trade mark must be “a sign” in the sense of being a single sign.
The Court invited submissions from the UKIPO on this point who argued that there was no incompatibility since a series of trade marks consists of a bundle of individual trade marks, each of which must conform with the registrability requirements. The UKIPO argued that nothing in the directive prevents provisions allowing more than one trade mark to be registered with another.
The Court felt not enough time had been allowed on this point at the hearing and decided to deal with the issue at a later hearing if necessary. We await that later decision.
If s.41 of the UK TMA 1994 is incompatible with EU law, then the implications clearly extend beyond this case and whether or not Twentieth Century Fox have infringed a now invalid registration. What happens to all of the thousands of series marks registered since the UK Act came into force? Could they all be deemed totally invalid or must a single one of the marks in the series be chosen to stay in force? What about past infringement or registry oppositions based on series marks?
This practitioner would be sad to lose this element of the UK trade mark law and feels that the Court will not find incompatibility here. However, there is now a new harmonisation directive which has come into force and will have to be enacted in the UK (which also makes no mention either way of series marks) so fundamental changes are in the air. Also the Court had no issues (and without even a reference to the ECJ) in striking out another long standing UK registry practice (although not a section of the Act) namely in the Cadbury Purple case where the Court found that the form of wording accepted by the UK Registry in relation to the description of a colour was not compatible in that it did not appropriately define a sign. That decision has clearly imperilled a number of validly registered colour marks which used similar wording and which also on that basis would now be invalid.
We will of course continue to follow any further developments from the Court of Appeal on these issues with great interest.
Under Section 41 of the UK Trade Mark Act 1994, it is possible to register a series of trade marks in the same registration. The qualification is that the marks in the series “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”. This provision has practical significance allowing protection for multiple “versions” of a mark with a single registration. It also has strategic significance as it enables the applicant to receive the examiner’s view on the registrability of a number of marks before deciding which ones to proceed with. Trade mark owners who secure a series registration are able to rely on any of the marks within the series in infringement proceedings.
In Glee, Twentieth Century Fox has gone beyond arguing that the registration it is claimed they infringe is invalid under inherent grounds such as non-distinctive or descriptive or that it should be cancelled for non use. They contend that it is invalid as the provision under which it was allowed is itself incompatible with the EU Harmonisation Directive - specifically that that directive requires a trade mark must be “a sign” in the sense of being a single sign.
The Court invited submissions from the UKIPO on this point who argued that there was no incompatibility since a series of trade marks consists of a bundle of individual trade marks, each of which must conform with the registrability requirements. The UKIPO argued that nothing in the directive prevents provisions allowing more than one trade mark to be registered with another.
The Court felt not enough time had been allowed on this point at the hearing and decided to deal with the issue at a later hearing if necessary. We await that later decision.
If s.41 of the UK TMA 1994 is incompatible with EU law, then the implications clearly extend beyond this case and whether or not Twentieth Century Fox have infringed a now invalid registration. What happens to all of the thousands of series marks registered since the UK Act came into force? Could they all be deemed totally invalid or must a single one of the marks in the series be chosen to stay in force? What about past infringement or registry oppositions based on series marks?
This practitioner would be sad to lose this element of the UK trade mark law and feels that the Court will not find incompatibility here. However, there is now a new harmonisation directive which has come into force and will have to be enacted in the UK (which also makes no mention either way of series marks) so fundamental changes are in the air. Also the Court had no issues (and without even a reference to the ECJ) in striking out another long standing UK registry practice (although not a section of the Act) namely in the Cadbury Purple case where the Court found that the form of wording accepted by the UK Registry in relation to the description of a colour was not compatible in that it did not appropriately define a sign. That decision has clearly imperilled a number of validly registered colour marks which used similar wording and which also on that basis would now be invalid.
We will of course continue to follow any further developments from the Court of Appeal on these issues with great interest.
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