The English owner of THE GLEE CLUB trade mark achieves victory against Twentieth Century Fox – but significant questions of law about series trade marks remain.
Comic Enterprises Limited opened a stand-up comedy venue in Birmingham, under the name THE GLEE CLUB, in 1994. It has operated a small number of similar venues in the UK since that date, although latterly also providing live and recorded music, as well as stand-up comedy. In 1999, Comic Enterprises registered its THE GLEE CLUB mark, as a series mark registration, and as represented above. (One of the representations of the mark claims colour as an element and the other is simply in black and white.)
Twentieth Century Fox Film Corporation launched a musical comedy television series in the UK, under the name GLEE, in late 2009 and has since generated significant publicity and audience. Comic Enterprises sued Twentieth Century Fox for infringement of their THE GLEE CLUB registration and were successful in both the High Court and now most recently in the Court of Appeal. A large proportion of the Court of Appeal’s judgment focuses on the question of the evidence of confusion adduced by the Claimant and points of law about the test for a likelihood of confusion.
One issue that was raised by the Court of Appeal, however, and was not resolved was that of the meaning and scope of protection of “series” trade marks under the UK Trade Marks Act. (Series mark registrations, as historically understood, are intended to facilitate protection of variations of marks, where those variations differ only as to “matters of a non-distinctive character”. An example of a historically acceptable series might be a cartoon character in a variety of different poses.)
In fact, the Court of Appeal went so far as to say that the question arose at the appeal hearing as to whether series marks were compatible with EU law. Whilst the Court appreciated the general importance of the issue, it indicated that it would, “if necessary”, give further directions for the resolution of this issue, after giving its main judgment. It is not clear whether the Court of Appeal will at a later date give further judgment on this issue.
In the absence of any further judgment, it is clear that a very serious difference of opinion has been raised between the UK Intellectual Property Office and the High Court as to the meaning and scope of series trade marks. The Court of Appeal explained that the UK IPO’s position, as set out in its written submissions to the Court, is that series marks are wholly compatible with EU law and that:
“a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law”.
This is in direct contrast to earlier findings of the High Court, for instance in the decision of Mr Justice Birss, in Thomas Pink Limited v Victoria’s Secret UK Limited, where the judge found that:
“When faced with a series mark it is necessary to bear in mind that there is only a single registered trade mark. All the instances in the series are manifestations of the same mark. So in order, for example, to carry out a comparison with a sign so as to assess infringement, it is necessary to work out what the single registered mark is so as to provide a single point of comparison with the sign alleged to infringe”.
This would appear to reflect an entirely different approach to the meaning of a series of trade marks and the infringement rights granted by such a registration. Absent resolution of the issue by the Court of Appeal, therefore, we are left with the following unattractive and contradictory propositions:
1 According to the Court of Appeal, series marks may in fact be contrary to the requirements of the underlying EU Trade Mark Directive (and, as a result, potentially may be invalidly registered);
2 According to the High Court, registration of a series of trade marks constitutes protection for, in essence, a single trade mark and relevant tribunals need to assess what is the underlying single mark protected (that may not be immediately apparent on the face of the register);
3 According to the IPO, registration of a series of trade marks constitutes a bundle of different and separate, but related, trade marks.
In THE GLEE CLUB case, the registration in issue comprised two quite closely related, though not identical, trade marks. There are, however, a very large number of series mark registrations on the UK register which comprise more significant numbers of marks, with more significant variations. It is hoped that the UK Courts will soon have the opportunity to bring clarity to this issue, given the uncertainty that now is placed on the meaning and scope of protection of those series marks.