Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

A registration of a series of trade marks is a registration of a bundle of separate marks under one reference number. Each mark must independently satisfy the requirements of the Trade Marks Act 1994.

Section 41 concerns national registration procedure. It neither creates a single composite mark nor requires identification of a supervenient mark or single point of comparison. The provision falls outside the matters harmonised by the Trade Marks Directive and is compatible with its requirements of clarity and precision.

To qualify as a series, the marks must resemble each other in their material particulars. Their differences must be non-distinctive and must leave their visual, aural and conceptual identities substantially the same when assessed from the average consumer’s perspective.

Comic Enterprises Ltd owned a registration under one number for a series of two device marks. The High Court held that Twentieth Century Fox Film Corporation had infringed the marks. In an earlier judgment, [2016] EWCA Civ 41, the Court of Appeal dismissed Fox’s infringement appeal, subject to an outstanding challenge to the validity of the series registration. Comic Enterprises’ cross-appeal concerning passing off failed.

Fox obtained permission to amend its defence and counterclaim to allege that section 41 of the Trade Marks Act 1994 was incompatible with Directive 2008/95/EC. It argued that a series registration comprised a single trade mark containing several signs and therefore lacked the clarity and precision required by EU law. The Comptroller-General submitted that it comprised a bundle of separate marks administered under one registration number.

The central issues were the proper nature of a series registration, its compatibility with EU law and whether a preliminary reference to the Court of Justice was necessary.

1. Appeal dismissed. Fox was permitted to amend its defence and counterclaim because its proposed invalidity challenge raised an essentially legal issue of general importance, had been fully argued and caused Comic Enterprises no material prejudice.
2. Section 41 of the Trade Marks Act 1994 is supplementary and procedural. A trade mark under section 1 is a single sign. Sections 37 to 40 prevent registration unless each sign satisfies the Act. Section 41 permits applications and registrations to be administered together, but creates neither a sui generis series mark nor a single trade mark consisting of several signs.
3. A series registration is therefore a bundle of different trade marks registered under one reference number. Each member must satisfy the statutory requirements independently and receives the protection afforded to an individual registered trade mark. The contrary characterisation in Sony Ericsson Mobile Communications AB’s Trade Mark Applications was erroneous. The associated requirement to identify a supervenient mark or single point of comparison was also rejected.
4. For marks to qualify as a series under section 41(2), they must resemble each other in their material particulars. Any differences must be non-distinctive and must leave their visual, aural and conceptual identities substantially the same. The assessment is made from the perspective of the average consumer of the relevant goods or services.
5. The registration procedure was compatible with Directive 2008/95/EC. The Directive harmonised substantive requirements concerning the nature, validity and protection of individual marks, but left the form of applications and organisation of national registers to Member States. Each sign in a series remained separately identifiable, self-contained, accessible, intelligible and unambiguous.
6. The presentation of similar marks as a series was not misleading. The existence of a registered family or series may affect the assessment of confusion only where enough members have been used to establish such a family in the market. No reference to the Court of Justice was necessary because section 41 concerned an unharmonised procedural matter and the register satisfied the established EU requirements.
7. The Court rejected the proposed declaration of invalidity and did not decide Comic Enterprises’ alternative arguments. Lloyd Jones LJ and Arden LJ agreed with Kitchin LJ.

• Court of Appeal (Civil Division): In [2016] EWCA Civ 455, the court dismissed Fox’s outstanding appeal on validity, holding that section 41 of the Trade Marks Act 1994 was compatible with EU law.
• Court of Appeal (Civil Division): In [2016] EWCA Civ 41, the court dismissed Fox’s infringement appeal subject to the outstanding validity issue. It also dismissed Comic Enterprises’ passing-off cross-appeal.
• High Court, Chancery Division: In [2014] EWHC 185 (Ch), Mr Roger Wyand QC, sitting as a deputy High Court judge, found that Fox had infringed Comic Enterprises’ series of registered trade marks.