Tuesday 23 February 2016

is it the end for the Series Trade Mark?

UK Trademark UK00002200698
First I must apologise for the long absence. I am missing my retired co-blogger and there has been an excess of litigation files in my life recently. There are many things that are sent to try us, from IT calamities to Brexit (more of that in a later post) but one issue that recently vexed me was the attack on the vires of the series trade mark in the UK.

It came in the long running and much commented saga between Comic-Enterprises and 20th-Century-Fox. The court of Appeal issued their decision on 8 February 2016 and for those of you interested in wrong way round confusion the full decision can be found here and I would have cited Wragges case note had they not re branded as Gowling WLG but you can still see how The Guardian reported it to the average consumer  here

The image of the mark it was all about is shown here.  Red, black and white are elements of the first mark in the series. You thought they both looked grey, but no the top one is brightly coloured and I suspect the staple is not intended to be an element of the sign either. It derives from 1999 before colour could be handled by the IPO and certainly before the sophisticated understanding encapsulated in the 2014 European Common understanding of black and white marks

In the 20th Century Fox case, Fox made an application for permission to amend its defence and counterclaim to introduce a claim that the registration is invalid because s.41 of the 1994 Act (which allows series marks to be registered) is not compatible with the requirement in EU law that a trade mark must be 'a sign' in the sense of being a single sign and capable of being 'graphically represented' as such pursuant to Articles 2 and 3 of Directive 2008/95/EC ("the Directive") and s.3(1)(a) of the 1994 Act. Now bear in mind that graphical representation is about to disappear from the reformed Directive. Signs will henceforth need only be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. The Court did not decide the matter. Instead they noted the IPO comments and left the matter as an outstanding issue, which is hardly satisfactory for the series using public.

The relevant part of the judgement is at paragraph 23:
Mr Alan James of UKIPO responded very promptly by letter dated 4 November 2015. In broad outline he submits on behalf of UKIPO that s.41 of the 1994 Act is wholly compatible with the Directive and that any doubt about this stems from a misunderstanding about the meaning and significance of a series of trade marks: 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. There is, he continues, nothing in the Directive which governs or restricts the form of trade mark registrations, and there is nothing which prevents Member States from enacting a national law permitting a number of trade marks to be registered together. We are extremely grateful to Mr James for dealing with this request so swiftly. However, in light of his submissions and the limited time available at the hearing of the appeal for the parties to consider them, we decided, at the conclusion of the hearing and with the agreement of the parties, that we would, if necessary, give further directions for the resolution of this issue after giving judgement.

It is perhaps disappointing that Mr James' spirited defence of the trademark agent's favourite two for the price of one offer was not immediately accepted. Now we must wait to see if Fox pursue the matter. They are not it seems guilty of passing off but only of trade mark infringement so invalidity of the registration would provide relief from their difficult situation.

Should we stop using series? What do you think?