series marks - depicting what a series mark is

The UK is the only trade mark system that I am aware of that offers “series marks”.

Under Section 41(2) of the Trade Marks Act 1994 states:

A series of trade marks means 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 trade mark.”

The key points to take from this Section is that you can obtain a single trade mark registration for a number of trade marks that have differences that do not affect the distinctive character of the mark to be registered. The EU does not have the same system in place and so for the last 40 years the series mark has remained a UK oddity.

However, in Comic Enterprises v Twentieth Century Fox Film [2016] EWCA Civ 455, Fox questioned whether a series mark in the UK was compatible with EU trade mark law given that, as they alleged, a series mark was not a single trade mark but a number of different trade marks which did not provide a single point of comparison.

In reply Comic Enterprises, argued that as a series mark was only to be different in non-distinctive elements that did not alter the trade mark, then the single point of comparison already existed (as the other differences in the series marks did not alter the overall perception of the trade mark in question).

Having looked at the relevant parts of the Trade Marks Act 1994 and the EU Trade Mark Directive, the High Court concluded that an application for a series mark was not in contravention of EU trade mark law. A series mark was simply a cost effective and efficient manner of managing a number of trade marks that would otherwise require a separate file number for each variation of a trade mark.

That means a series trade mark was not a different subset of trade marks because the requirement for filing required that it was self-contained, easily accessible, and intelligible.

In addition, it was confirmed that “once it is appreciated that a registration of a series of trade marks is a registration of a series of different trade marks, each of which is registered under the same number, the non-use provisions can be applied just as they are for any registered trade mark. If some of the trade marks in the series have been used and others not, then it may be that none is susceptible to revocation as a result of the saving conferred by section 46(2) in respect of use of the mark in a form differing in elements that do not affect the distinctive character. If, however, some of the trade marks in the series which have not been used for some reason do not satisfy the section 46(2) test then the registration of those trade marks may be revoked.”

The Court of Appeal decision removes any uncertainty over the validity of the tens of thousands of trade marks registered as series marks in the UK and confirms that this registration practice can continue for the benefit of brand owners across the UK and is compatible with EU trade mark law. It is a shame that such a crucial decision was not made 40 years ago, rather than being overshadowed by the impending  of the UK and EU trade mark system.