We reported recently on the Court of Appeal’s decision in the dispute between Comic Enterprises and Twentieth Century Fox concerning the trade mark GLEE. Our earlier article explains why Fox’s appeal was dismissed.
An interesting secondary issue arising from the case concerns the lawfulness of series marks. Fox applied for permission to introduce a new claim that section 41 of the Trade Marks Act 1994, governing the use of series marks (which includes Comic’s mark) is incompatible with the requirement of the EU Trade Marks Directive , which requires that a trade mark be a single sign capable of graphical representation. The UK Intellectual Property Office submitted in response that series trade marks are a bundle of separate trade marks each entitled to protection under EU law. The Court decided that there was insufficient time available to decide this issue at the hearing and elected to determine the issue at a later date if necessary.
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.
If Fox were to succeed in its argument, it would have very serious repercussions for the proprietors of series marks as their very legality would be called into question.