Trade marks: series registration

Background

A trade mark means any sign that is capable of distinguishing goods or services of one undertaking from those of other undertakings (section 1, Trade Marks Act 1994) (TMA) (section 1)). Section 3(1)(a) of the TMA (section 3(1)(a)) prohibits the registration as a trade mark of any sign whose representation does not fulfil these requirements.

Section 41(1) of the TMA (section 41)  states that provision may be made by rules as to the registration of a series of trade marks. A series of trade marks means a number of trade marks that 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 (section 41(2)). In Sieckmann v Deutsches Patent-und Markenamt, the European Court of Justice (ECJ) held that in order to be registrable as a trade mark, a sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

In Sony Ericsson Mobile Communications AB’s Trade Marks Applications, the Appointed Person took the view that a series consisted in a number of different manifestations of what was in essence the same trade mark (O-138-06). This approach was followed by the High Court in Thomas Pink v Victoria's Secret UK Ltd. 

Facts

In 1999, C registered a series of two UK figurative trade marks. C began trade mark infringement proceedings against F. 
The High Court held that C’s mark was infringed by F. F appealed, arguing that a series registration was a sui generis form of mark that failed to fulfil the Sieckmann criteria.

The Court of Appeal dismissed the appeal by F, holding that the marks were infringed. However, it reserved judgment on whether section 41 was incompatible with EU law (making the trade marks invalid) because it resulted in the registration of marks that did not fulfil the requirements of the Trade Marks Directive (2008/95/EC) and Sieckmann.

Decision

The court dismissed the appeal. It held that the system established under section 41 was compatible with EU law and that C’s marks were therefore valid. This was because the series formed a bundle of separate but similar trade marks, each of which fulfilled the requirements of section 1. The court rejected F’s argument that a series registration failed to fulfil the Sieckmann criteria.

The court also rejected the single mark approach in Sony Ericsson and Thomas Pink. This was problematic as it required the identification of a single mark within the series with which all of the marks in that series were identical, which was hard to reconcile with the necessity for the mark to be self-contained, clear, precise, readily accessible and intelligible.

An application for a series of marks gave rise to a series of different trade marks, all registered under a single registration number, and not to a single registered mark. The purpose of the series marks’ registration system was procedural efficiency, and not the registration of a type of mark that was different from a non-series mark.

There was no need for a reference to the ECJ: the scheme for registering a series was compatible with the ECJ’s decision in Sieckmann and with the Trade Marks Directive.

Comment

This decision leaves the way open for C to seek remedies for F’s use of the GLEE mark, although F has announced that it intends to appeal to the Supreme Court.

The court’s guidance is useful in correcting the impression, given by Sony Ericsson and Thomas Pink, that a series mark should be treated as a single registered trade mark, with each instance in the series being a manifestation of that mark. This would raise the problem of having to work out what the single registered mark was, so as to provide a single point of comparison with the sign alleged to infringe. That would run contrary to the many ECJ decisions that have emphasised the public policy interest in ensuring that the scope of each registered mark is clearly identifiable not just to lawyers, but also to businesses and the general public.

Case: Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455.

First published in the July 2016 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.