Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin,Lord Justice Lloyd Jones:,Lady Justice Arden |
| Judgment Date | 25 May 2016 |
| Neutral Citation | [2016] EWCA Civ 455 |
| Docket Number | Case No: A3/2014/3075 & 3076 |
| Court | Court of Appeal (Civil Division) |
| Date | 25 May 2016 |
[2016] EWCA Civ 455
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (Intellectual Property)
Mr Roger Wyand QC (sitting as a Deputy High Court Judge)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lady Justice Arden
Lord Justice Kitchin
and
Lord Justice Lloyd Jones
Case No: A3/2014/3075 & 3076
Douglas Campbell QC (instructed by Gowling WLG (UK) LLP) for the Claimant/Respondent
Iain Purvis QC and Simon Malynicz QC (instructed by Simmons & Simmons LLP) for the Defendant/Appellant
Nicholas Saunders for the Comptroller General of Patents, Designs and Trade Marks (instructed by the Treasury Solicitor)
Hearing date: 7 April 2016
Introduction
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:
The two marks are identical save that the first mark in the series claims the colours red, black and white as an element of the mark.
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.
The rival positions
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
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.
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