The Court of Appeal recently ruled on an outstanding aspect of the appeal brought by Twentieth Century Fox in the 'Glee' trademark dispute. The issue has the potential to have much wider implications for UK trademarks since it relates to the compatibility of Section 41 of the Trademark Act 1994 – which allows the registration of series marks – with EU law.
Claimant Comic Enterprises Ltd has operated live music and stand-up comedy venues across the United Kingdom since 1994 under the names 'Glee' and 'The Glee Club'. Since 2001, Comic has owned a UK trademark for a series of two figurative marks which feature 'Glee'. The veritable Goliath in the case, media company Twentieth Century Fox produced the well-known US TV series Glee, which was first broadcast in the United Kingdom in late 2009.
The issue in this most recent Court of Appeal hearing related to the validity of Comic Enterprises' marks, which were registered as series marks under Section 41 of the Trademark Act. The marks in question are shown below and are identical except that the first mark in the series claims the colours red, black and white as an element of the mark.
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Section 41 of the Trademark Act is part of the registration provisions of that act, and a series of trademarks is defined as "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 mark".(1)
Fox contended that series marks were incompatible with the requirement under EU law that a trademark must be a single sign capable of being graphically represented in a clear, precise, unequivocal and objective way.(2)
High Court decision
In September 2011 Comic issued proceedings against Fox, claiming trademark infringement under Sections 10(2) and 10(3) of the Trademark Act and passing off. At the 2014 High Court trial, the judge ruled that the Glee television series did infringe Comic's mark, but dismissed the claim for passing off. Fox appealed against the finding of trademark infringement and Comic cross-appealed the passing off decision.
Court of Appeal decision
In February 2016 the Court of Appeal rejected both appeals and upheld the High Court's decision. It confirmed the following:
- 'Wrong way round' confusion aided the Court of Appeal in deciding whether there was a likelihood of confusion in light of Fox's actual and threatened activities;
- There was a degree of similarity between Comic's mark and Fox's use of the word 'Glee' sufficient to amount to trademark infringement; and
- The similarity gave rise to a "link" in the minds of consumers which caused those who did not like the TV series Glee to change their behaviour to the detriment of Comic.
The Court of Appeal recognised that Fox had adopted 'Glee' in good faith, but that there had nonetheless been damage to the reputation and distinctive character of Comic's mark.
Comic also failed in its cross-appeal for passing off with the Court of Appeal, emphasising the distinction between 'confusion' and 'misrepresentation' – the latter being a prerequisite for a finding of passing off. The Court of Appeal agreed that Comic had established goodwill in 'Glee' in respect of its venues when the TV series premiered, but rejected the notion that subsequent confusion was sufficient to make out misrepresentation by Fox.
An interesting aspect of February's appeal hearing was that, late in the day, Fox also raised the additional point relating to Section 41 of the Trademark Act, which governs the registration of series marks. The challenge had the potential to have a significant impact on the owners of series trademarks since it threatened the legality of those marks. The Court of Appeal reserved its decision on this point until this most recent judgment, in order to allow evidence from the comptroller general of patents, designs and trademarks.
Compatibility with EU law
The comptroller general provided evidence that a series of trademarks registered under Section 41 of the Trademark Act are in fact a series of individual marks which must each comply with the requirements of Directive 2008/95 in order to be valid. He argued that the registration of marks as a series of marks is simply an administrative process which does not result in additional rights.
Lord Justice Kitchen (followed by Lord Justice Lloyd Jones and Lady Justice Arden) accepted this analysis, and held that even though EU law does not allow a series of trademarks to be registered, this does not mean that the registration of series marks under the Trademark Act goes further than EU law (ie, tries to create a new or additional trademark right). The invitation to refer the question to the European Court of Justice was declined.
The Court of Appeal's confirmation of the legality of Section 41 of the Trademark Act will come as a relief to owners of series marks. More generally, this decision may encourage the registration of marks in this way. Provided that such marks are sufficiently similar to meet the qualifying conditions set out in Section 41 of the Trademark Act, they are individually entitled to the protection afforded to every trademark under EU law; and being able to register and renew such marks as a series provides administrative cohesion and consolidation. As a practical matter, an application for a series of marks can include up to six marks – the first and second marks are included in the application fee, but any additional marks require an additional fee to be paid.
For further information on this topic please contact Ciara Cullen or Louise Morgan at RPC by telephone (+44 20 3060 6000) or email (firstname.lastname@example.org or email@example.com). The RPC website can be accessed at www.rpc.co.uk.
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