The Court of Appeal has ruled that trade marks registered as a series are compatible with EU law.
The decision, handed down today (25 May) marks another victory for Gowling WLG client Comic Enterprises Limited (Comic) in its long-running dispute with media giant Twentieth Century Fox (Fox) over the TV show "Glee".
Partner Cerryg Jones and Senior Associate Nick Smee advised Comic, owner of The Glee Club comedy and music chain. Douglas Campbell QC acted as counsel.
The Court of Appeal's decision removes the uncertainty over the validity of tens of thousands of UK marks registered together as a series. It also means that this registration practice, along with the associated price discounts currently offered by the UK IPO, can continue.
The decision is expected to be widely welcomed by brand owners holding (or interested in holding) UK trade marks registered as a series.
Specifically, the Court of Appeal has held that the practice of registering trade marks together as a series does not contravene the EU requirement that a trade mark must be capable of being graphically represented in a clear, self-contained, easily accessible, intelligible, durable and objective manner. More detail can be found in our legal alert.
In February 2016 the Court of Appeal confirmed that The Glee Club’s trade mark had been infringed by the Fox’s ‘glee’ show.
Comic Enterprises established its first live entertainment venue in Birmingham in 1994 and now operates venues in Cardiff, Oxford and Nottingham. The owner, Mark Tughan, registered the trademark almost a decade before the launch date of the "glee" television series in 2009.