May 31, 2016

Continued "GLEE" for Comedy Club in Trade Mark Dispute Appeal

The UK based comedy venue, The Glee Club, has been successful in the Court of Appeal in respect of a judgment reserved from an earlier decision.

The appeal related to an appeal by US TV show 'Glee' owner, Twentieth Century Fox Film Corporation (Fox), on a single point of law relating to the validity of "series" trade marks.


In the original case, relating to two trade marks registered as a series, the Court of Appeal dismissed an appeal by Fox that the marks had not been infringed (First Decision).  However, the Court reserved judgment on a single point of law; that being whether section 41 Trade Marks Act 1994 (TMA) was incompatible with EU law (making the trade marks invalid).

The Law

Section 1 of the TMA provides that a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. Section 3(1)(a) TMA prohibits the registration as a trade mark of any sign whose graphical representation does not fulfil these requirements.

To be registrable, a sign must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective" (Sieckmann v Deutsches Patent-und Markenamt (Case C-273/00) [2005] 1 CMLR 40) (the "Sieckmann Criteria").

Section 41(1) of the TMA provides that provision may be made by rules as to the registration of a 'series' of trade marks.

Section 41(2) of the TMA provides that a series of trade marks means a number of trade marks that 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.

Section 46 of the TMA sets out the circumstances in which a trade mark can be revoked for non-use, says that in this context, use of a trade mark includes use in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered.

Fox challenged series marks as being incompatible with EU law thereby making the trade marks invalid because it resulted in the registration of marks that did not fulfil the requirements of 'graphical representation'.


The Court of Appeal dismissed the appeal and held that registration of trade marks as a series is not contrary to EU law thereby confirming that The Glee Club's trade marks were valid (thereby confirming that they could be infringed as had been determined in the First Decision).

Meaning and Purpose of Section 41

The critical question was whether an application for a series of marks gave rise to a single registered mark, or whether, as the Comptroller (represented by Nicholas Saunders) maintained, it gave rise to a series of different trade marks, all registered under a single registration number.

Fox argued that it was necessary to have a "single point of comparison" between all of the marks in question and claimed that series marks should be invalid under EU law and that it was not possible for those types of marks to exist.

Fox further argued that if a series registration gave rise to a series of separate marks, it would be difficult to apply the non-use provisions of section 46 of the TMA.

Kithchin LJ agreed that the Comptroller was correct to say that an application to register a series of marks was an application to register a bundle of marks under a single reference number and held that the purpose of the system for registration of series of marks was procedural efficiency, and that the system increased the efficiency of examination of near-identical marks and searching for them on the register.  It was not the registration of a type of mark that was any different from a non-series mark and it did not create and different type of mark.

Section 41 and compatibility with EU law

Fox also alleged that the presentation of a trade mark on the register as part of a series was misleading and therefore series marks would not fulfil the Sieckmann Criteria.  The Judge dismissed this argument.

Additional Background

We first reported the case in February 2016, where The Glee club won the trade mark infringement aspect of the case. The Club successfully persuaded the High Court that the use of the word 'GLEE' infringed its rights. Our first report can be seen here.

Further Appeal

Subsequent to the Court of Appeal decision it has emerged via a public statement from Fox that it plans to take the matter to the UK Supreme Court.

in: News, Trade Marks

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