Decision Nº O/068/03 from Intellectual Property Office - (Trade market), 3 March 2003
| Judge | Professor Ruth Annand |
| Registration Number | UK00002214271 |
| Administrative Decision Number | O/068/03 |
| Date | 03 March 2003 |
| Court | Intellectual Property Office (United Kingdom) |
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IN THE MATTER OF APPLICATION No. 2214271
BY LOGICA PLC
TO REGISTER A SERIES OF TRADE MARKS
IN CLASSES 9, 16, 35, 36, 37, 38, 41 AND 42
AND IN THE MATTER OF AN APPEAL
BY THE APPLICANT
TO THE APPOINTED PERSON
AGAINST THE DECISION OF MR. A. J. PIKE
DATED 28 FEBRUARY 2002
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DECISION
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Introductory
1. This appeal concerns the registration of series of trade marks under section
Rules 2000 (TMR). A “series of trade marks” is stated for this purpose by
section 41(2) of the TMA to be:
“… 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.”
2. Section 41(1)(c) and (2) have a lengthy history in UK domestic trade marks
law. Provision for the registration of a series of trade marks was first
contained in section 66 of the Patents, Designs and Trade Marks Act 1883, as
amended and carried forward into the 1905 and 1938 Trade Marks Acts. The
immediate predecessor of section 41(1)(c) and (2) of the TMA was section
21(2) of the Trade Marks 1938, which said:
“Where a person claiming to be the proprietor of several trade marks,
in respect of the same goods or description of goods, which, while
resembling each other in the material particulars thereof, yet differ in
respect of -
(a) statements of the goods in relation to which they are
respectively used or proposed to be used; or
(b) statements of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not
substantially affect the identity of the trade mark; or
(d) colour;
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seeks to register those trade marks, they may be registered as a series
in one registration.”
The old law treated the trade marks within a series as associated trade marks
(see, e.g., section 23(4) of the 1938 Act) but the practice of association was
discontinued in the TMA (White Paper, Reform of Trade Marks Law, DTI,
September 1990, Cm 1203, para. 4.44 – 4.45).
3. The original reason for series registration was to enable proprietors to secure
protection for label marks abroad (Report of the Herschell Committee, 1888,
C-5350, Minutes of Evidence, paras. 1113, 1116 – 1121, and 2051 – 2052).
That reason has long since disappeared not least because the London Act of
the Paris Convention introduced the following revision in 1934 (at Article
6quinquiesC(2)):
“No trademark shall be refused in the other countries of the Union for
the sole reason that it differs from the mark protected in the country of
origin only in respect of elements that do not alter its distinctive
character and do not affect its identity in the form in which it has been
registered in the said country of origin.”
4. Despite this, the continued appropriateness of series registration seems to have
been assumed by the Goschen Report of 1934 (Cmnd 4568), the Mathys
Report of 1974 (Cmnd 5601) and more recently the White Paper of 1990. I
have been unable to discover in the formal documentation any reason for the
inclusion of series registration in the TMA. The Registrar informs me that to
the best of her knowledge, no other EC Member State apart from the UK and
Ireland recognises the concept of the registration of series of trade marks in
their harmonised trade mark laws.
a provision derived from Council Directive 89/104/EEC (“the Directive”) in
the light of sections in the TMA which are home grown. However, the reverse
is not necessarily true. The Directive does not attempt a full-scale
approximation of the trade mark laws of the Member States (recital 3,
Preamble). But home grown provisions in the latter cannot be interpreted in a
manner that is incompatible with, or defeats the intentions behind, the
Directive’s substantive law framework.
6. I have found it useful in determining the boundaries of series registration to
consider also section 46(2) of the TMA, which provides in so far as relevant
that for the purposes of the use requirements set out in 46(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 …”.
Section 46(2) implements art. 10(2)(a) of the Directive. Article 10(2)(a) in
turn derives from art. 5C(2) of the Paris Convention, which like art.
6quinquiesC(2) was added in 1934 by the London Act.
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7. It seems that there is little English case law directly on the point. The
Registrar informed me that the words “not substantially affecting the identity”
(of the trade mark) appeared in other sections of the old law, including
alteration of a registered trade mark, and I have considered the case law
relating to that. I believe that the provisions relating to amendment and
alteration under the new law may also be relevant. Sections 39(2) and 44(2)
do not come from the Directive but are closely modelled on arts. 44(2) and
48(2) of Council Regulation (EC) 40/94 on the Community trade mark
(CTMR). In severely restricting the circumstances in which amendment or
alteration can take place, they reflect the desire for legal certainty in a trade
mark that pervades the harmonised trade marks law (see, e.g., Ralf Sieckmann
v. Deutsches Patent- und Markenamt, Case C-273/00, 12 December 2002,
(ECJ)). Sections 39(2) and 44(2) of the TMA state respectively:
s. 39(2)
“In other respects [i.e. withdrawing the application or restricting the
specification], an application may be amended, at the request of the
applicant, only by correcting –
(a) the name or address of the applicant,
(b) errors of wording or of copying, or
(c) obvious mistakes,
and then only where the correction does not substantially affect the
identity of the trade mark or extend the goods or services covered by
the application.”
s. 44(2)
“Nevertheless [i.e. a registered trade mark cannot be altered], the
registrar may, at the request of the proprietor, allow the alteration of a
registered trade mark where the mark includes the proprietor’s name or
address and the alteration is limited to alteration of that name or
address and does not substantially affect the identity of the mark”.
8. Finally, I have had the benefit of the parties’ written submissions on
Australian case law relating to series registration under section 39(1) of the
Australian Trade Marks Act 1955 (now section 51(1) Australian Trade Marks
Act 1995). The Australian provisions on series registration are in substantially
the same terms as section 21(2) of the 1938 Act set out in paragraph 2 above.
The Australian case law was uncovered in later researches and sent by me to
the parties after the hearing of the appeal with invitations to comment.
The application
9. The application in suit was filed by Logica plc (“the Applicant”) on 12
November 1999 and accorded number 2214271. The Applicant requested the
registration of 308 trade marks as a series in Classes 9, 16, 35, 36, 37, 38, 41
and 42. The first mark listed in the representation was the word LOGICA
alone. The remaining 307 marks consisted of the word LOGICA and a
number of different domain name suffixes. The marks are attached at Annex
A and the specifications of goods and services at Annex B.
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