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Glee and series marks

Print publication

21/07/2016

We have reported previously on the dispute between Comic Enterprises and Twentieth Century Fox concerning the trade mark GLEE. In our last article on the subject, we explained that Fox had applied for permission to introduce a new claim that section 41 of the Trade Marks Act, governing the use of series marks, is incompatible with the requirement of the EU Trade Marks Directive [1], which requires that a trade mark be a single sign capable of graphical representation.

Under section 41, it is possible to register a series of trade marks in the same registration. The qualification (section 41(2)) is that the marks in the series “resemble each other as to their material particularities and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. This enables the protection of multiple versions of the same mark within a single registration.

In response to Fox’s argument the UK Intellectual Property Office submitted that series trade marks are a bundle of separate trade marks each entitled to protection under EU law.

The Court of Appeal [2] considered that the Directive allowed Member States the freedom to determine their national provisions and procedures for registering a trade mark and, so long as the mark was a qualifying “sign” and capable of graphical representation so as to enable the competent authorities – in the case of the UK, the UK Intellectual Property Office – to establish with clarity and precision the nature of the sign of which the mark consisted, there was nothing in the Directive that prohibited the registration of a series of marks that satisfied all these conditions.

The Court agreed with the Comptroller of Trade Marks’ submissions that a series registration gave rise to a series of different trade marks, each of which was individually registered, albeit it with a single registration number. The Court reviewed past decisions concerning applications to register a series of trade marks and determined that such applications had consistently been considered as applications to register a number of different trade marks, each of which was required to satisfy the statutory requirements for registrability.  In order to qualify as series marks, the trade marks in question must resemble one another in their material particulars.

The case is a useful clarification of the nature of series registrations. It affirms that series marks should not be treated as a single registered mark, with each instance being a manifestation of that one mark.  They are a bundle of marks with a single reference number.

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[1] Directive 2008/95/EC
[2] [2016] EWCA Civ 455

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