Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

Section 41 of the Trade Marks Act 1994, properly interpreted, is compatible with Directive 2008/95/EC. Registration of a series of trade marks is not the registration of a single trade mark consisting of multiple signs, but rather a bundle of individual trade marks, each of which must satisfy the requirements of the Act and the Directive. The system does not contravene EU law, and the registration is not liable to be declared invalid on this ground.

Parties
Claimant/respondent: Comic Enterprises Ltd; Defendant/appellant: Twentieth Century Fox Film Corporation; Interested Party: Comptroller General of Patents, Designs and Trade Marks
Jurisdiction
England and Wales
Judgment Date
25 May 2016
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal dismissed
Legal Topics
Trade Mark Registration, Series of Trade Marks, Compatibility With EU Law, Graphical Representation, Directive 2008/95/ec, Trade Marks Act 1994 Section 41
Intellectual Property Trademark Law European Union Law Trade Mark Registration Series of Trade Marks Compatibility With EU Law Graphical Representation Directive 2008/95/ec +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 24 Party arguments 2
Sign in to unlock

Parties

Comic Enterprises Ltd

Claimant/respondent

Twentieth Century Fox Film Corporation

Defendant/appellant

Comptroller General of Patents, Designs and Trade Marks

Interested Party

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Whether section 41 of the Trade Marks Act 1994 (registration of a series of trade marks) is compatible with Directive 2008/95/EC and EU law requirements for trade marks to be a single sign capable of graphical representation
  2. 2 Whether the registration of a series of trade marks is liable to be declared invalid under section 47 of the Trade Marks Act 1994

Ratio Decidendi

Section 41 of the Trade Marks Act 1994, properly interpreted, is compatible with Directive 2008/95/EC. Registration of a series of trade marks is not the registration of a single trade mark consisting of multiple signs, but rather a bundle of individual trade marks, each of which must satisfy the requirements of the Act and the Directive. The system does not contravene EU law, and the registration is not liable to be declared invalid on this ground.

Court Disposition

Appeal dismissed

Orders

  • Permission to amend defence and counterclaim granted to Fox
  • No declaration of invalidity; registration stands