Appleyard Lees

Episode I: A series of developments for series of trade marks

Series marks are a common feature of the United Kingdom trade marks system, but one that is unusual because it is found in very few other countries.  The process allows several trade marks to be protected in a single registration. To constitute a series, the marks must:

“…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
”[1].

This is particularly useful where a brandowner uses the same word or logo but alters one element, for example, the colour to represent different flavours or seasonal marketing campaigns.  Series marks can therefore offer significant cost savings for brandowners who may protect multiple iterations for the cost of just one application fee.

For example, the following may constitute a series:

Mark Representation
 1 Appleyard green
 2 Appleyard grey
 3 Appleyard black

However, there is an argument that series marks are insufficiently clear and precise and are therefore incompatible with European law.  So fundamental are these questions that series marks will be considered by the UK’s Supreme Court in the coming months.

Background

For a trade mark to be registered it must be a “sign” (singular)[2].  It must also be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”[3] (the Sieckmann criteria).

In Comic Enterprises v Twentieth Century Fox Film[4] (Glee), the English courts are being asked to consider whether UK trade mark registration number 2200698 (shown below) constitutes a “sign” (singular) and satisfies the Sieckmann criteria.

The Glee Club
The applicant claims the colours red, black and white as an element of the first mark in the series.

There are currently two diverging views which are:

  1. a series is a single trade mark with several iterations; or
  2. a series is a bundle of individual trade marks.

In Glee, the High Court preferred the first approach.  This aligned with another recent first instance decision, Thomas Pink v Victoria’s Secret UK Ltd[5] (Thomas Pink), which concerned UK trade mark number 2565078:

Pink black

Pink white

The judges in each case directed themselves to identify what was the single trade mark.  They then looked for a “single point of comparison”.  In Thomas Pink, the single point of comparison was held to be the stylised word PINK, in a rectangle and on any background colour (not just black and white). Using this test, the images in the registration are to be regarded as simply examples of the mark, which is more of a concept than a fixed representation.

However, this approach has been criticised because it there is a degree of subjectivity as to what is the “single point of comparison”; hence there is no certainty and therefore the argument runs that the marks do not comply with the Sieckmann criteria.

Glee in the Court of Appeal

Glee was appealed and Kitchin LJ favoured the second approach and held that, in his view, series marks are a bundle of individual trade marks which can be separately challenged, including for non-use.  In his judgment, the procedure for registration of marks as a series is merely administrative and, as a consequence, the UK has discretion over the process.  This means that series marks per se are not prohibited under EU law.

To be continued…

We therefore have several conflicting decisions on the extent of legal protection offered by series marks.  The High Court has twice favoured the first approach and the more senior Court of Appeal the second.  Fortunately, Glee is on appeal to the UK Supreme Court and awaiting a hearing.  We will have to wait for the next instalment to see whether there is a happy ending.

For guidance on the protection under UK law of black and white trade marks and colour trade marks, please see our article here.

Footnotes:

[1] Section 41(2) Trade Marks Act 1994

[2] Section 1(1) Trade Marks Act 1994

[3] Sieckmann v Deutsches Patent-und Markenamt, Case C-273/00 (paragraph 55)

[4] Comic Enterprises v Twentieth Century Fox Film [2016] UKSC 2016/0135; EWCA Civ 455; [2014] EWHC 185 (Ch)

[5] Thomas Pink v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch)

 

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