Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

On 8 February 2016 this court handed down judgment in these appeals ([2016] EWCA Civ 41). Subject to one outstanding point, we held that the appeal by Twentieth Century Fox Corporation (“Fox”) against the finding made by Mr Roger Wyand QC in his judgment that Fox had infringed the series of trade marks registered by Comic Enterprises Limited (“CEL”) under number 2200698 should be dismissed. The outstanding point concerns the validity of the registration.

It will be recalled that the registration was secured upon an application made by CEL in accordance with the rules made under s.41 of the Trade Marks Act 1994 (“the 1994 Act”) and is for a series of two device marks which look like this:

At the outset of the appeal hearing, Fox made an application for permission to amend its defence and counterclaim to introduce an allegation that the registration is invalid because s.41 of the 1994 Act is not compatible with the requirement in EU law that a trade mark must be a sign which is capable of being graphically represented within the meaning of Articles 2 and 3 of Directive 2008/95/EC (“the Directive”) and s.3(1)(a) of the 1994 Act. Specifically, Fox seeks our permission to contend:

“26A. Further or alternatively the Claimant’s trade mark is liable to be declared invalid under s.47 of the Trade Marks Act 1994 because the said mark, being a series mark, is not a sign (in the sense of being a single sign) and/or is not graphically represented in a clear, precise, unequivocal and/or objective way and it was therefore registered contrary to s.3(1)(a) of the Trade Marks Act 1994.”

As we explained in our judgment, it appeared to us at the appeal hearing that the question whether s.41 of the 1994 Act is compatible with EU law is one of general importance upon which the Comptroller-General of Patents, Designs and Trade Marks might wish to be heard. However, enquiries revealed that the Comptroller had not been notified that this point might be taken. Accordingly, at our suggestion, a letter was written to the Comptroller on 3 November 2015 inviting him to make submissions if he so wished. Mr Allan James responded on behalf of the Comptroller very promptly by letter the following day. In light of that response and the limited time available at the hearing of the appeal for the parties to consider it, 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 judgment.

The s.41 issue is now potentially determinative of the whole claim, since the cross-appeal by CEL in relation to passing off has failed, leaving only the trade mark infringement claim which, subject to this issue, has succeeded. Accordingly, we gave directions for the filing by the parties of any further submissions upon which they intended to rely and for a further oral hearing. That hearing took place on 7 April 2016. At our invitation, the Comptroller also filed further submissions and was represented at the further hearing by Mr Nicholas Saunders. We are most grateful to the Comptroller and Mr Saunders for all of the assistance they have given to us.

I begin with an outline of the rival contentions of the parties and the submissions of the Comptroller. Fox’s primary contention is that the registration of a series of trade marks is, in essence, a registration of a single trade mark or, put another way, a registration of a single trade mark which consists of a number of signs. It continues that it is necessary to identify a “single point of comparison” between all of the marks in the series and the mark of any third party and that this is inevitably an uncertain exercise and so contrary to established principles of EU law. Fox has a secondary position. It submits that if marks registered as a series have the character contended for by the Comptroller and summarised below then the form in which they are presented in the register renders them misleading and is contrary to EU law. Accordingly, Fox continues, any registration of a series of trade marks is liable to be declared invalid and s.41 of the 1994 Act and the rules made under it are themselves incompatible with EU law. It also invites us to refer certain questions to the Court of Justice for a preliminary ruling.

The Comptroller maintains that a series of trade marks is a bundle of individual trade marks, each of which must comply with the requirements for protection set out in the Directive if it is to be registered, and each of which is, if registered, individually entitled to the protection afforded to every trade mark under EU law. The 1994 Act provides that a number of such trade marks may, if they meet the qualifying conditions set out in s.41 of the 1994 Act, be registered and renewed as a series. Section 41 is therefore an administrative provision and it falls outside the scope of the Directive.

CEL adopts the Comptroller’s submissions but maintains in the alternative that if it is necessary to identify a single point of comparison between all of the marks in the series and the mark of any third party then that criterion is satisfied in this case. In the yet further alternative, CEL contends that any deficiency in its registration could be remedied by deleting either of the two marks in the series. Finally, it invites us to dismiss Fox’s application for permission to amend its defence and counterclaim on the basis that the application has been made too late and that it would be unfairly prejudiced were we to give Fox the permission it seeks.

I shall deal with CEL’s last point at the outset. In my judgment and for reasons to which I shall come, the issue raised by Fox’s proposed amended pleading is essentially one of law. Moreover, it is an issue of considerable general importance upon which we have now had the benefit of hearing full argument. The issue was first raised in Fox’s skeleton argument served three days prior to the trial and on the second day of the trial Fox reserved it for any appeal. I am not persuaded that CEL would suffer any material prejudice were we to decide the points raised by the draft amended pleading and accordingly I would give Fox permission to make the amendment.

It is convenient to address the issues before us by considering first, the scope of the Directive and the essential requirements of a trade mark imposed by Article 2; secondly, the proper interpretation of s.41 of the 1994 Act and the rules made under it; thirdly, whether the form of the register, including its treatment of a series of trade marks, is incompatible with the Directive; fourthly, whether the issue before us involves a point of EU law which should be referred to the Court of Justice; and finally, whether it is necessary to decide any of the fall-back arguments relied upon by CEL.

The Directive is intended to harmonise the trade mark laws of Member States and so ensure the proper functioning of the internal market. However, it was not thought necessary to undertake full-scale approximation, as Recital 4 makes clear:

“It does not appear to be necessary to undertake full-scale approximation of the trade mark laws of the Member States. It will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market.”

Some of the matters outside the scope of the Directive are set out in Recital 6 which reads, so far as material:

“Member States should also remain free to fix the provisions of procedure concerning the registration, the revocation and the invalidity of trade marks acquired by registration. They can, for example, determine the form of trade mark registration and invalidity procedures, decide whether earlier rights should be invoked either in the registration procedure or in the invalidity procedure or in both and, if they allow earlier rights to be invoked in the registration procedure, have an opposition procedure for an ex officio examination procedure or both. Member States should remain free to determine the effects of revocation or invalidity of trade marks.”

Recitals 8 to 12 then detail those aspects of trade mark law which must be harmonised in order for the objectives of the Directive to be attained. They include the conditions for obtaining and continuing to hold a registered trade mark; the grounds for refusal or invalidity concerning any trade mark; the requirement that any registered trade mark must actually be used or, if not used, be subject to revocation; and the degree of protection which registered trade marks must enjoy.

The Directive is therefore not concerned with the procedural machinery necessary for dealing with applications and registrations. As the Comptroller points out and I accept, the aspects of procedure concerning the applications for and registration of trade marks which fall outside the scope of the Directive will include the form of an application and the general manner in which the register is organised and presented. The Directive does, however, impose stringent requirements as to the nature of the sign of which a mark must consist, as I shall now explain.

Article 2 of the Directive addresses this issue and provides:

“Article 2

Signs of which a trade mark may consist

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Article 3 deals with the grounds for refusal or invalidity and reads, so far as material to this appeal:

“Article 3

Grounds for refusal or invalidity

1.

The following shall not be registered or, if registered, shall be liable to be declared invalid:

(a)

signs which cannot constitute a trade mark; …”

The requirements imposed by these provisions have been considered by the Court of Justice in a series of decisions involving applications to register unusual signs as trade marks. Case C-273/00 Sieckmann v Deutsches Patent-und Markenamt [2003] RPC 38 concerned an application to register what was described as an olfactory mark being a chemical substance defined by a particular structural formula. The referring court asked whether Article 2 must be interpreted as meaning that a trade mark may consist of a sign which cannot be perceived visually.

In answering that question the Court of Justice explained how Article 2 must be interpreted and the requirements of the graphical representation in these terms:

“46.

That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

47.

Such an interpretation is required to allow for the sound operation of the trade mark registration system.

48.

First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

49.

Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

50.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.

51.

On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.

52.

If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.

53.

Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.

54.

Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

55.

In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2004] FSR 4 concerned an application to register the colour orange as a trade mark for telecommunications services. The Court of Justice was asked a series of questions relating to whether and, if so, in what circumstances, a colour per se, not spatially defined, was capable of possessing distinctive character for certain goods or services. In answering those questions the Court explained at [22] that to be capable of constituting a trade mark, the colour must satisfy three conditions: first it must be a sign; secondly, it must be capable of graphical representation; and thirdly, it must be capable of distinguishing the goods or services of one undertaking from those of another. The Court then reiterated (at [28] to [29]) that a graphical representation within the meaning of Article 2 must enable the sign to be represented visually so that it can be precisely identified. Moreover, in order to fulfil its function, the graphical representation must be clear, self-contained, easily accessible, intelligible, durable and objective.

The importance of the graphical representation being such that the competent authorities and economic operations can ascertain with clarity and precision the nature of the sign of which the mark consists was emphasised by the Court of Justice in Case C-49/02 Heidelberger Bauchemie GmbH [2004] ETMR 99, a case concerning an application to register as a trade mark for products used in the building trade a sign comprising the colours blue and yellow. The Court put it this way at [25] to [31]:

“25.

Moreover, it is clear from the Court’s case-law (Case C-273/00 Sieckmann [2002] ECR I-11737, paragraphs 46 to 55, and Libertel, paragraphs 28 and 29) that a graphic representation in terms of Article 2 of the Directive must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

26.

Such an interpretation is necessary for the proper working of the trade mark registration system.

27.

The function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

28.

The entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators.

29.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks.

30.

On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.

31.

In those circumstances, in order to fulfil its role as a registered trade mark, a sign must always be perceived unambiguously and uniformly, so that the function of mark as an indication of origin is guaranteed. In the light of the duration of a mark’s registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must also be durable.

32.

It follows from the above that a graphic representation for the purpose of Article 2 of the Directive must be, in particular, precise and durable.”

It emerges from all of these authorities that the graphical representation of the sign must be self-contained, durable, clear and precise, and it must be easily accessible and intelligible such that the authorities and economic operators can and will unambiguously and reliably perceive the sign in the same way. The graphical representation must have these characteristics so that the mark of which the sign consists can fulfil its function as an indication of origin. All of these requirements were reiterated by the Court of Justice in case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator Trade Mark) [2013] RPC 11 in holding that the Directive required the goods or services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators on that basis alone to determine the extent of the protection sought.

The substantive law of registered trade marks is contained in Part 1 of the 1994 Act. Section 1 implements Article 2 of the Directive and defines a “trade mark” in these terms:

“1.

(1) In this Act 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.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

(2)

References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50).”

This is of some importance. A trade mark is “any sign” which satisfies the statutory criteria and not, it is to be noted, a series of signs. Moreover, any trade marks of a special character are identified in subsection (2), that is to say collective marks and certification marks. These are defined and specific provision is made for them in, respectively, ss.49 and 50.

Registered trade marks are defined in s.2. This says:

“2.

(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

(2)

No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law of passing off.

This must be read with ss.62 and 63. These sections appear in Part III of the Act which is concerned with administrative and other supplementary provisions and they read, so far as material:

“The registrar

The registrar

62.

In this Act “the registrar” means the Comptroller-General of Patents, Designs and Trade Marks.

The register

63.

(1)   The registrar shall maintain a register of trade marks.

References in this Act to “the register” are to that register; and references to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in that register.

(2)

There shall be entered in the register in accordance with this Act—

(a)

registered trade marks,

(b)

such particulars as may be prescribed of registrable transactions affecting a registered trade mark, and

(c)

such other matters relating to registered trade marks as may be prescribed.”

Hence “registration” of a trade mark means registration in the register of trade marks that the registrar must maintain.

Applications for a trade mark are dealt with in ss.32 to 34 of Part 1 of the Act. Section 32(1) provides that an application for the registration of a trade mark is made to the registrar and, by s.32(2)(d), it must contain a representation of the trade mark. The date of filing of the application is, by s.33, the date upon which all necessary documents are furnished to the registrar.

The procedure for registration of a trade mark is addressed from s.37 to s.41. The application is examined by the registrar pursuant to s.37 to determine whether it satisfies the requirements of the Act, including any requirements imposed by the rules. Here the registrar will consider, inter alia, whether the application is for a trade mark within the meaning of s.1. If the applicant is unable to satisfy the registrar that the requirements have been met then the application must be refused. If, on the other hand, it appears to the registrar that they have been met then the application will be accepted.

If the application is accepted it will be published in accordance with s.38 and then it may be opposed by any third party. At any time during the application procedure, the applicant may withdraw, restrict or amend the application in limited respects under s.39. Finally, pursuant to s.40, once an application has been accepted, any opposition proceedings have been resolved in favour of the applicant and the necessary fees have been paid, the registrar must register the trade mark unless it appears to him having regard to matters coming to his attention since the application was accepted that the registration requirements were not met at that time.

That brings me to s.41, the last of the provisions concerned with registration procedure. It is headed “Registration: supplementary provisions” and confers a power to make rules dealing with the division of an application, the merging of separate applications or registrations and, of most importance to this appeal, the registration of a series of trade marks. It reads, so far as material:

“Registration: supplementary provisions

41.

(1)     Provision may be made by rules as to—

(a)

the division of an application for the registration of a trade mark into several applications;

(b)

the merging of separate applications or registrations;

(c)

the registration of a series of trade marks.

(2)

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.

(3)

Rules under this section may include provision as to—

(a)

the circumstances in which, and conditions subject to which, division, merger or registration of a series is permitted, and

(b)

the purposes for which an application to which the rules apply is to be treated as a single application and those for which it is to be treated as a number of separate applications.”

The Trade Marks Rules 2008 (SI 2008/1797) (as amended) made under s.41 provide, so far as material:

“Registration of a series of trade marks; section 41 (Form TM12)

28(1)     An application may be made in accordance with rule 5 for the registration of a series of trade marks in a single registration provided that the series comprises of no more than six trade marks.

(1A)  Where an application for registration of a series of trade marks comprises three or more trade marks, the application shall be subject to the payment of the prescribed fee for each trade mark in excess of two trade marks.

(2)

Following an application under paragraph (1) the registrar shall, if satisfied that the marks constitute a series, accept the application.

(3)

. . .

(4)

. . .

(5)

At any time the applicant for registration of a series of trade marks or the proprietor of a registered series of trade marks may request the deletion of a mark in that series and, following such request, the registrar shall delete the mark accordingly.

(6)

Where under paragraph (5) the registrar deletes a trade mark from an application for registration, the application, in so far as it relates to the deleted mark, shall be treated as withdrawn.

(7)

. . .”

The history of s.41 was helpfully set out by Professor Ruth Annand in Logica plc’s Trade Mark Application (O/068/03). As she explained, the concept of a registration of a series of trade marks has its origin in s.66 of the Patents Designs and Trade Marks Act 1883 and was carried forward through the 1905 Trade Marks Act to s.21(2) of the 1938 Trade Marks Act, the immediate predecessor of s.41. It has no counterpart in the Directive or Council Regulation (EC) No.207/2009 on the Community trade mark (“the Regulation”).

The requirements for registration of a series of trade marks upon one application are contained in s.41(2). The trade 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.

The advantages of a system which allows such applications to be made are not difficult to discern and were explained to us by the Comptroller. In short, it enables more efficient examination of trade marks because the decision about the acceptance of any individual trade mark is likely to be (but will not necessarily be) the same as the decision on all the other trade marks in the series; it facilitates more efficient searching of the register because very similar trade marks may be kept in the same physical or electronic entry in the register; and it permits the use of particular costs provisions for applications for the registration of very similar trade marks to reflect the lower incremental costs of assessing them.

Finally, I must mention s.46(2) for it has played a part in the reasoning of a number of the decisions to which I must refer. Section 46(1) provides that a registered trade mark may be revoked if within a period of five years following the completion of the registration procedure it has not been put to genuine use in the United Kingdom or that use has been suspended for an uninterrupted period of five years, and in either case that there are no proper reasons for that non-use. Section 46(2) then provides some guidance as to what constitutes use of a variant of the trade mark and it reads, so far as relevant:

“(2)

For the purposes of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, …”

That brings me to the first critical question, namely whether, as Fox contends and the deputy judge appears to have assumed, an application for a series of trade marks gives rise to a single registered trade mark or whether, as the Comptroller contends, it gives rise to a series of different trade marks, each of which is registered, albeit under a single registration number.

In my judgment the structure of the 1994 Act and the terms of s.41 support the Comptroller’s contention. I say that for the following reasons. First and as I have explained, the term “trade mark” is defined in s.1 as “any sign” and not, it is to be noted, a series of signs. Moreover, any trade marks of a special character are expressly identified in subsection (2) and they do not include any concept of a “series trade mark”.

Second, the operation and inter-relationship of ss.37 to 40 mean that it is not possible to register a trade mark unless it falls within the definition of a “trade mark” in s.1 and consists of a single sign. Specifically, registration under s.40 requires the application to have been accepted, and s.37, dealing with acceptance, requires the registrar to be satisfied that the application has met the requirements of the Act.

Third, it is clear that s.41 is a supplementary provision intended to facilitate the effective operation of the application and registration systems. Hence it permits the division of applications, the merging of applications or registrations and the registration of a series of trade marks. For these purposes it allows rules to be made. It does not purport to be a provision which creates trade mark rights let alone a new and sui generis kind of trade mark.

Fourth, the words of s.41 are, so it seems to me, consistent with the interpretation for which the Comptroller contends. Specifically, s.41(1)(c) refers to the registration of a series of trade marks. Section 41(2) says a series of trade marks means a number of trade marks which resemble each other in the defined way and differ only in particular and limited respects. These references suggest that a series of trade marks consists of a number of different (albeit very similar) trade marks. I recognise that the closing words of subsection (2), in referring to the permitted differences, say that those differences must not substantially affect “the identity of the trade mark” but it seems to me that these words call for a comparison of the marks in the series, one with another, and require no difference between them substantially to affect the identity of any one of them. Certainly these closing words form far too flimsy a basis for the contention that s.41 creates a new kind of registered trade mark.

Fifth, s.41(3)(a) contemplates that trade marks registered separately may be merged to form a series, and vice versa.

Sixth, rule 28(1) provides for the registration of trade marks as a series and says in terms that a registration may comprise six trade marks and not, it is to be noted, a single trade mark consisting of six signs. Similarly, rule 28(1A) refers to three or more trade marks and says that the prescribed fee must be paid for each trade mark in excess of two trade marks. So also, rule 28(2) provides that the registrar shall, if satisfied that the marks constitute a series, accept the application.

Seventh, I have given careful consideration to the submission made by Mr Purvis for Fox that the interpretation urged by the Comptroller is unworkable. How, said Mr Purvis, are the non-use provisions of s.46 to be applied? I am not persuaded this presents any difficulty. 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 s.46(2) in respect of use of the mark in a form differing in elements which do not alter its distinctive character. If, however, some of the trade marks in the series which have not been used for some reason do not satisfy the s.46(2) test then the registration of those trade marks may be revoked.

Eighth, under the Madrid Protocol, an application for an international registration of a trade mark must be based upon a trade mark in a national application or registration. If an international application is based upon a UK trade mark then the UK Intellectual Property Office (“UKIPO”) is required to certify that the mark the subject of the international application is the same as the UK trade mark. Accordingly, as the Comptroller explained, an international application can be (and sometimes has been) based on just one of the trade marks registered as a series under the 1994 Act. In these circumstances UKIPO certifies that the relevant trade marks are the same. It would be unable to do so if it was required to consider a series of trade marks as a single entity in order to find a “single point of comparison”.

I come then to a number of decisions concerning applications to register various series of trade marks to which we referred during the course of the appeal. They have generally involved a consideration of one or both of two issues: first, whether the marks in the series for which registration is sought satisfy the requirements of s.1 and whether any of the absolute grounds of refusal of s.3 apply; and secondly, whether the marks in the series are sufficiently similar to satisfy the requirements of s.41(2). It is convenient to consider first, those decisions which focused on objections to individual marks in a series and secondly, those which focused on the requirements of s.41(2).

Dualit Ltd’s Trade Mark Applications [1999] RPC 890 concerned an application to register a series of six marks comprising depictions of two-slice, four-slice and six-slice versions of two distinct designs of toaster, one with an angled end and the other with a rounded end. The application was opposed and the hearing officer refused it on a variety of grounds under s.1 and s.3 of the 1994 Act. On appeal, Lloyd J (as he then was) was required to consider whether the various toaster shapes depicted in the application were inherently distinctive or whether they had acquired any distinctive character through use. Importantly, the judge carried out this exercise in relation to each of the shapes. He concluded that the shapes were not inherently distinctive and that none of them had acquired a distinctive character through use. Although the question whether they could properly be registered as a series did not in these circumstances arise, the judge also recorded his view that the two different models of toaster differed in respects which were not limited to matters of “a non-distinctive character not substantially affecting the identity of the trade mark” and so all six shapes did not form a single series.

Colgate-Palmolive Co’s Trade Mark Application [2002] RPC 26 concerned an appeal to Professor Ruth Annand as the Appointed Person against a decision of the hearing officer refusing four applications, each for a series of trade marks consisting of the image of a slug of striped toothpaste. Professor Annand considered each of the marks in each of the series and concluded, as had the hearing officer, that, in the absence of any distinctiveness acquired through use, each and every one of the marks put forward was devoid of any distinctive character and therefore debarred from registration.

In Sodexho Educational Services Ltd’s Trade Mark Application (O/086/07) Mr Geoffrey Hobbs QC as the Appointed Person considered each of three marks comprising the words ‘for you’ and for which registration had been sought as a series. Mr Hobbs concluded that the hearing officer had been right to find that each of the marks was devoid of any distinctive character.

Finally and most recently, in Lidl Stiftung & Co KG’s Trade Mark Application (0/382/15) Mr Hobbs as the Appointed Person dismissed an appeal from the hearing officer refusing Lidl’s application to register as a series of trade marks various signs comprising representations of the word ‘simply’. Mr Hobbs held that the hearing officer was right to conclude that registration should be refused on the basis that each of the signs was devoid of any distinctive character.

It can be seen that in these different cases an application for the registration of a series of trade marks was considered as an application for the registration of a number of different trade marks, each of which was required to satisfy the statutory requirements. There is no suggestion that the applications were considered as applications for the registration of what was in substance a single trade mark.

I turn now to consider the approach adopted to the interpretation of s.41(2) of the 1994 Act and begin with the decision in the Logica case to which I have referred. This concerned an application by Logica to register 308 marks, each of which consisted of the word LOGICA with a suffix. The hearing officer found that the trade marks did not qualify as a series. On appeal to the Appointed Person, Professor Annand agreed. She held the marks did not qualify as a series within the meaning of s.41(2) because they did not resemble each other as to their material particulars. In reaching that conclusion it is, I think, clear that Professor Annand considered the application in issue as an application for a series of 308 different trade marks for she explained (at [29] and [44]) that the correct approach was to take the first mark in the series and compare it with each of the other marks. Professor Annand also considered whether s.41(2) should be understood as containing two conditions or three. At [38] she said this:

“I agree with Mr. James that section 41(2) contains three conditions and not two but prefer to describe them according to their positive and negative aspects. First, on the positive side, section 41(2) requires the trade marks for which series registration is sought to resemble each other in their material particulars. Second and third, the negative aspects are that any difference in the trade marks must not comprise matter, which when considered:

(a)

as a separate element of the trade mark would be regarded as having distinctive character; and

(b)

in the context of the trade mark as a whole, substantially affects the identity of the trade mark.”

Professor Annand then addressed (at [39]) five matters which she had found influential in arriving at this interpretation. She reasoned first, it would be inconsistent with the scheme of the 1994 Act and the Directive to accord to s.41(2) a wider ambit than s.46(2). Secondly, and while it was permissible to have regard to the separate elements making up a mark when assessing distinctive character, it was important to consider how the relevant public perceived the mark as a whole.

Professor Annand explained the third, fourth and fifth matters in these terms:

“(iii)

An application for a series of trade marks is treated as a single application and, if accepted, results in a single registration (section 41(3) TMA, rule 21(1) TMR). The TMA speaks variously of “a trade mark”, a “registered trade mark” and “the registration of a trade mark”. Section 41(2) itself refers to “the identity of the trade mark”. There is a growing body of authority under the Directive, which recognises that certainty in the form of a registered trade mark is essential to the effective operation of the trade mark system. Recently in Sieckmann, supra., the Court of Justice of the European Communities stated (at para. 53):

“In order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin.”

(iv)

That requirement for legal certainty in the trade mark is policed through sections 39(2) and 44(1) – (2) of the TMA, which circumscribe the amendments or alterations that can be made before and after a trade mark is registered. It is contemplated by the wording of those sections that a change in the name or address of the owner included in the trade mark might substantially affect the identity of the trade mark.

(v)

Again following from (iii) – the UK is a member of the Madrid System for the International Registration of Marks, which is based on the need for a basic application or registration of the trade mark in the country of origin (Agreement art. 1(2), Protocol art. 2(1). The Madrid System does not recognise series registrations. Yet the UK Trade Marks Registrar is required to certify that the mark for which international registration is sought is the same as the “home mark”.”

Mr Purvis submitted that it is possible to detect here some tension between s.41 and the Directive. I disagree. It is true that an application for a series of trade marks is treated as a single application. It is also true that, if accepted, all of the trade marks in the series are registered under a single registration number. I do not, however, understand Professor Annand to have suggested in these sub-paragraphs that an application for a series of trade marks gives rise to a single registered trade mark. I think she was focusing on the need for a careful examination of each of the trade marks in the series and was seeking to discern the extent to which s.41(2) accommodated a difference between each such trade mark and the other trade marks in the series. If, however, she did so suggest, then I respectfully disagree with her for reasons I have set out from [37] to [44] above and for the further reasons to which I shall shortly come.

Professor Annand next addressed the meaning of “not substantially affecting the identity of the trade mark”. In that regard she thought it hard to improve on the observation of Jacob J (as he then was) in Neutrogena Corporation v Golden Limited [1996] RPC 473 at pages 488 to 489. He said regarding the same phrase in s.30(1) of the Trade Marks Act 1938:

“Not substantially affecting its identity means what it says, both in this section and in other sections of the Act (e.g. section 35). An alteration which affects the way a mark is or may be pronounced, or its visual impact or the idea conveyed by the mark cannot satisfy the test.”

In Digeo Broadband Inc’s Trade Mark Application (O/305/03), [2004] RPC 32 Mr Hobbs upheld the refusal of the hearing officer to accept an application for registration of 308 marks as a series under s.41(2). It is apparent from the decision that Mr Hobbs treated the various marks in the series as separate trade marks. He explained (at [3]) that a relatively high degree of homogeneity is required in order to ensure that the marks included in the application can be treated as uniformly eligible or uniformly ineligible for protection by registration. As he put it, “the wording of s.41(2) establishes that there must and can only be iteration of the material particulars of a trade mark with variations of a non-distinctive character not substantially affecting the identity of the trade mark thus reiterated”. He continued that each of the marks in question should be considered as a whole, from the perspective of the average consumer of the goods or services concerned, when assessing whether they form a series of the kind contemplated by the Act. He then contrasted s.41(2) with s.46(2):

“4.

Section 41(2) permits less variation between marks than section 46(2) of the Act (article 10(2)(a) of the Directive; article 15(2)(a) of the CTMR). Variations can be treated as inconsequential under the latter provisions if they ‘do not alter the distinctive character of the mark’ for which protection is claimed, but must also have no substantial effect on ‘the identity of the trade mark’ in order to be acceptable under section 41(2). This reinforces the point that marks can be distinctively similar without necessarily satisfying the statutory requirements for registration as a series.”

Just a short while later, Mr Hobbs, again sitting as the Appointed Person, elaborated upon these observations in Gateway Inc’s Trade Mark Application (O/0322/03):

“20.

I consider that the identity of a mark resides in its specific individuality, assessed according to the way in which it would be perceived and remembered by the average consumer of the goods or services concerned. The average consumer is for that purpose taken to be reasonably well-informed and reasonably observant and circumspect. Marks presented for registration as a series must each be assessed from that perspective when they are being compared for the purpose of determining whether they satisfy the requirements of section 41(2) cf BUD and BUDWEISER BUDRÄU Trade Marks [2002] EWCA Civ 1534, [2003] RPC 25 at [10] per Sir Martin Nourse and [43]-[46] per Lord Walker of Gestingthorpe. The need for comparison of the marks inter se is clear. The intensity of the examination that may be needed in order to arrive at a conclusion on the acceptability of a series application can be seen from the decision issued under the parallel provisions of the Trade Marks Act 1995 (Cth) in Re Application by Johnson and Johnson (1993) 28 IPR 167. Round observations as to the general nature or common characteristics of the marks in issue are seldom, if ever, likely to be sufficient. The statute calls for a finding that all visual, aural and conceptual differences are insubstantial in terms of their effect upon the identity of the reiterated trade mark.”

Pausing here, the requirements imposed by s.41(2) may be summarised as follows. In order to qualify as a series the trade marks must resemble each other in their material particulars. Any differences between the trade marks must be of a non-distinctive character and must leave the visual, aural and conceptual identity of each of the trade marks substantially the same. These matters must be assessed from the perspective of the average consumer of the goods or services in question.

That brings me to the decision of Mr Richard Arnold QC (as he then was) in Sony Ericsson Mobile Communications AB’s Trade Mark Applications (O-138-06). This was a decision of Mr Arnold as the Appointed Person on an appeal by Sony Ericsson against the decision of a hearing officer refusing two applications for a series of trade marks. Mr Arnold concluded that the hearing officer was correct to uphold the objection that in each case the marks sought to be registered did not qualify as a series within the meaning of s.41(2). In so doing he again considered the requirements imposed by this subsection. After referring to the decisions in the Logica, Digeo and Gateway cases, he continued in these terms:

19.

I agree with these analyses. I would emphasise a point which was made both by Professor Annand and Mr Hobbs. The concluding words of section 41(2) refer to the identity of the trade mark. Only if the differences between the marks presented for registration are insubstantial in terms of their effect upon the identity of the trade mark do they qualify as a series. It follows that a series consists of a number of different manifestations of what is in essence the same trade mark.

20.

In my judgment this interpretation of section 41(2) is supported by Articles 4(1)(a) and 5(1)(a) of the Directive and Articles 8(1)(a) and 9(1)(a) of the Regulation, corresponding to sections 5(1) and 10(1) of the 1994 Act, and the jurisprudence of the ECJ relating to those provisions. These provide that a later trade mark may not be registered if it is identical with an earlier trade mark and the respective goods or services are identical, and that use in the course of trade of such a later trade mark infringes the rights conferred by the earlier trade mark. In such circumstances of double identity a likelihood of confusion is presumed (see Article 16(1) of TRIPs). These provisions presuppose a single exercise of comparison between the earlier trade mark and the later trade mark to ascertain whether or not they are identical. It would not be consistent with the scheme of the legislation for the earlier trade mark to comprise multiple candidates for comparison capable of giving rise to different answers to the question “identical or not?”. Registration of a series of marks can only be consistent with these provisions if the answer to this question is the same regardless of which mark in the series is selected for the comparison.

Mr Arnold then expressed the view that this did not mean that all of the marks in the series had to be absolutely identical and he referred in that connection to the decision of the Court of Justice in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799. There the Court described (at [50] to [54]) the concept of identity in Article 5(1) of the Directive and held that a sign is identical with a trade mark when it reproduces, without any modification or addition, all of the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.

Reverting to s.41(2), Mr Arnold continued:

22.

It would be consistent with this interpretation of the Directive to permit registration of a series of marks which were identical to each other in this sense. If the differences between the marks are so insignificant that those differences may go unnoticed by an average consumer, then the marks are functionally identical to each other and provide what is in essence a single point of comparison for the question “identical or not?” when judging any question of alleged conflict under sections 5(1) or 10(1) of the 1994 Act. By contrast, it would in my judgment not be consistent with the Directive to permit registration of a series of marks which were not identical to each other in this sense.

23.

Chapter 34 of the Registry’s Work Manual contains a number of examples of what the Registry considers to be acceptable and unacceptable series applications applying the principles enunciated by Professor Annand in Logica. One of the examples given of an acceptable series is:

MERKINS LODGEMENT CENTRE

MERKINS LODGMENT CENTRE

In my view this is a good example of what is permissible under section 41(2). These two signs are essentially the same trade mark. The average consumer would probably not notice the difference unless the two were placed side by side, and even then some consumers might not spot the difference. Indeed, I can well imagine the same consumer writing this trade mark in the two alternative ways on different days of the same week.

24.

For the avoidance of doubt, I should explain that the “single point of comparison” to which I have referred may be pitched at a greater or lesser degree of generality according to context. Thus if the mark is a pure word mark, then it will embrace a variety of different typographical presentations of that word. If the mark is a device mark represented in monochrome with no colour claim or limit, then it will embrace reproductions of that device in a variety of colours. The position is otherwise if the mark is a word in a particular script or a device in a specific colour or combination of colours.”

Mr Arnold expressed his agreement with the decisions in Logica, Digeo and Gateway. However, his reasoning and the conclusion to which he has come are, so it seems to me, different from those in each of the earlier decisions in two material respects. First, he considered that registration of a series of trade marks is, in substance, a registration of a number of different representations of what is in essence the same trade mark, and here he focused particularly on the closing words of s.41(2). Secondly, he explained that this interpretation was consistent with and supported by Articles 4(1)(a) and 5(1)(a) of the Directive (and the corresponding provisions of the Regulation). As he went on to say, these provide that a later trade mark may not be registered if it is identical with an earlier trade mark and the respective goods or services are identical, and that use in the course of trade of such a later mark infringes the rights conferred by the earlier trade mark. In his view all of these provisions presupposed a single point of comparison between the earlier and the later marks in answering the question: “identical or not?”.

The notion that a registration of a series of trade marks is a registration of a number of different manifestations of what is in essence the same trade mark (and that one must find in the series of trade marks a single point of comparison for the question “identical or not?” when considering any question of conflict under sections 5(1) or 10(1) of the 1994 Act) was adopted by Mr Wyand QC in his judgment in this case when seeking to determine the scope of the two marks the subject of the registration (see at [57] to [73]). It was also a matter of common ground and accepted by Birss J in Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631, (Ch) [2014] FSR 40 (see at [104] to [106]).

It is an approach which presents real problems, however, as the judgment of Mr Wyand in this case illustrates. First, the test of identity explained by the Court of Justice in the LTJ Diffusion case is not the same as that set out in s.41(2) for the registration of marks as a series. Secondly, it requires the identification in the series of what Mr Saunders for the Comptroller described as some kind of supervenient mark with which all of the marks in the series are identical. This is a task which, as Mr Purvis submitted and I think the Comptroller was disposed to accept, is fraught with difficulty and is hard to reconcile with the requirement imposed by EU law that the graphical representation of the sign must be self-contained, clear, precise and readily accessible and intelligible.

Moreover and as I have sought to explain at [37] to [44] above, the scheme of the 1994 Act and the terms of s.41 point strongly to the interpretation for which the Comptroller contends, as do the majority of the decisions in which applications for the registration of series of marks have been considered. There is, however, no indication in Mr Arnold’s decision that he took these matters into account. There is, for example, no reference in the decision to the parts of s.41 that emphasise its purpose as a rule making power and no consideration is given to the position of s.41 in the scheme of the Act. Further, Mr Arnold’s analysis is focused upon the last few words of s.41(2) to the exclusion of the other words in that provision.

In light of all of these matters, I have come to the firm conclusion that the interpretation of s.41 for which the Comptroller contends is correct. In my judgment Mr Arnold fell into error in characterising the registration of marks in a series in the way that he did. The interpretation contended for by the Comptroller gives effect to the ordinary meaning of the words used and takes proper account of the context in which those words appear. An application for the registration of a series of trade marks is an application to register a bundle of trade marks under a single reference number. Each of the marks in the series must satisfy the requirements of the 1994 Act. If the application is accepted and any opposition proceedings have been resolved in favour of the applicant, then the series of marks will be registered, but it will remain what it always was, namely a bundle of different marks, albeit now registered under the same reference number.

Mr Purvis submitted that the Comptroller has in some way reinvented ‘series trade marks’ as a set of registered trade marks and that this involves a departure from the traditional understanding of such marks as reflected in the decision of Mr Arnold in Sony Ericsson and followed most recently by Birss J in Thomas Pink. I accept that the Comptroller has submitted that the proper interpretation of s.41 is different from that arrived at by Mr Arnold. However and for the reasons I have given, I do not accept that this involves any reinvention. To the contrary, I believe that the language of s.41 and the context in which it appears show that it does not create some kind of sui generis mark.

More substantively, Mr Purvis contends that s.41, so understood, is plainly contrary to EU law. In support of that submission Mr Purvis took us first to the decision of the Court of Justice in case C-234/06 P Il Ponte Finanziara SpA v OHIM [2008] ETMR 13 which concerned an application to register a figurative sign including the word “Bainbridge” as a Community trade mark for certain categories of goods. The application was opposed by the proprietor of several national trade marks for the same categories, all including the element “bridge”. The opposition was rejected by OHIM and that rejection was upheld by the Court of First Instance. On yet further appeal, the Court of Justice was required to consider the criteria for assessing the likelihood for confusion between marks, with particular regard to the relevance of the existence of a “family” or “series” of similar registered marks belonging to the same proprietor. The judgment of the Court on this issue is clear. The Court recognised that where there is a family or series of trade marks, a likelihood of confusion may result from the possibility that the consumer may consider erroneously that the trade mark applied for is part of that family or series of marks. However, that is only so when the marks in the series have been used, as it explained at [62] to [66]:

“62.

While it is true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried by comparing the two marks as they were registered, the same does not apply where the opposition is based on the existence of several trade marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ or ‘series’ of marks.

63.

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see Alcon v OHIM, paragraph 55, and, to that effect, Canon, paragraph 29). Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.

64.

As the Advocate General stated at paragraph 101 of her Opinion, no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.

65.

Thus, contrary to what the appellant maintains, the Court of First Instance did not require proof of use as such of the earlier trade marks but only of use of a sufficient number of them as to be capable of constituting a family or series of trade marks and therefore of demonstrating that such a family or series exists for the purposes of the assessment of the likelihood of confusion.

66.

It follows that, having found that there was no such use, the Court of First Instance was properly able to conclude that the Board of Appeal was entitled to disregard the arguments by which the appellant claimed the protection that could be due to ‘marks in a series’.”

Founding himself on this passage, Mr Purvis submitted that the presentation of a trade mark on the register as part of a series is highly misleading. He continued that the registration of a series of trade marks identifies, highlights and stresses the existence of the marks as a family and so emphasises their common elements to a much greater extent than would be the case if they were registered as individual marks.

Mr Purvis sought to find support for this submission in the decision of Lewison J (as he then was) in O2 Holdings Ltd v Hutchison 3G Ltd [2006] EWHC 534 (Ch), [2006] RPC 29. This was a claim for infringement of a number of registered trade marks including two trade marks registered as a series and referred to as “Technical”. In that connection the judge said this at [78]:

“78.

Secondly, Mr Hobbs draws attention to the fact that the two images in the “Technical” trade mark are registered as a series. He says that a relatively high degree of homogeneity is required in order to satisfy the statutory criteria for protection by registration in series. The wording of s.41(2) requires iteration of the material particulars of a trade mark with nothing more than variations of a non-distinctive character not substantially affecting the identity of the trade mark reiterated within the series: Digeo Broadband Inc's Trade Mark Application [2004] R.P.C. 32. Thus the difference between blue and monochrome, at least in the case of Technical, must be regarded as immaterial to its distinctiveness. I agree.”

Here, continued Mr Purvis, the judge was himself misled by the nature of the registration and wrongly used it to ascertain the scope of protection to which the marks were entitled. It follows that consumers too are bound to be confused.

The answer to this submission is I think clear. The Court of Justice has now explained that in assessing the likelihood of confusion it is not permissible to take into account the fact that the earlier mark is part of a family of similar marks unless the members of the family upon which reliance is placed have been used. It is only if the marks have been used that it becomes relevant to consider whether the average consumer would believe that the accused mark is from the same family because it embodies some element that all of the marks in the family share. It seems to me that this applies as much to similar marks that are registered as a series as it does to similar marks that are registered separately, and I am not persuaded that the registration of trade marks as a series is likely to cause any material difficulty in this regard in the future. Nor am I impressed by the submission based upon the decision of Lewison J in O2 Holdings. The judge simply accepted an argument that he should infer from the fact that the registrar had accepted the earlier marks as a series that the feature that distinguished them (their colouring) did not affect their distinctiveness. His acceptance of that argument does not suggest that he was in any way misled by the way they were registered. Nor is there any indication that he had the benefit of hearing submissions such as those made to us. The Court of Justice has provided a good deal of guidance as to how the distinctive character of a mark is to be assessed and the decision in Il Ponte has now clarified the circumstances in which it is permissible to have regard to the common elements in a series or family of marks in assessing the likelihood of confusion.

I therefore reject the submission that the registration of trade marks as a series is highly misleading.

Mr Purvis invites us to seek the guidance of the Court of Justice on the question whether s.41 of the 1994 Act is compatible with the Directive. In the course of the hearing he and Mr Simon Malynicz QC, with whom he appeared, formulated draft questions which ask, in substance, whether the expression “signs capable of represented graphically” in Article 2 of the Directive encompasses trade marks which are registered as a series; and whether such marks satisfy the requirements of clarity and precision explained by the Court of Justice in Sieckmann, Libertel, Heidelberger and IP Translator.

I have not found it necessary to seek the guidance of the Court of Justice in connection with any issue arising on this appeal. My reasons are set out above but in summary are these. First, s.41 and the rules made under it do not purport to create a new kind of trade mark. They are concerned with the procedure for registering and the form of registration of particular trade marks which are very similar. These are matters which are not harmonised by the Directive and which, as Recital 6 makes clear, remain within the competence of Member States. They are therefore matters in relation to which Member States retain a discretion as to the provisions they introduce, at least to the extent that such provisions do not affect the balance upon which the Directive is based, and subject to the principles of equivalence and effectiveness.

Secondly, the register of trade marks which is maintained under the 1994 Act and the scheme which was introduced under the Act to permit the registration of similar marks as a series are in my judgment entirely compatible with the requirements of the Directive as spelled out by the Court of Justice in Sieckmann, Libertel, Heidelberger and IP Translator. For present purposes I can focus on the decision in Heidelberger at [28] to [30] (see at [20] above). The register is public and the entry on the register of marks which form a series renders those marks accessible to the competent authorities and to the public, including economic operators. The register permits the competent authorities to know the nature of the signs of which marks registered as a series consist so that those authorities can carry out their obligations in relation to the prior examination of applications for registration and the maintenance of the register. The register also permits economic operators to find out about registrations and applications for registration made by their current and potential competitors. Finally, a trade mark which has been registered as part of a series of marks is as self-contained, easily accessible and intelligible and will be perceived as unambiguously as a trade mark which has been registered on its own.

In the circumstances it is not necessary to address the fall-back arguments developed by CEL and I prefer not to do so.

For all of the reasons I have given, I have come to the conclusion that s.41 of the 1994 Act is compatible with the Directive. I would also reject the argument that the trade marks in issue in this case are liable to be declared invalid. I would dismiss this appeal.

I agree.

I also agree.