Series of Trade Marks
Hong Kong trade mark law allows up to four trade marks which resemble each other as to their material particulars to be registered under one registration at no additional cost. Series registrations are intended to facilitate the protection of variations of marks, where variations differ only as to features of a non-distinctive character.
Brand owners often register their marks as a series covering (i) a monochrome version, and (ii) one or more coloured versions of the mark, and many believe that this provides wider protection under one registration - that is, protection of the mark in all colours pursuant to the black and white version, and having protection over the specific colour(s) claimed in the series.
However, since a series registration should only cover marks which do not differ materially from each other, then the colour features of the colour version(s) of the mark in the series must be non-distinctive since a valid series of marks should only vary from one another as to matters of a non-distinctive character. Accordingly, what does the addition of the colour mark in the series add to a brand owner's protection?
In answering this, the following questions need to be considered:-
1. Does a black and white mark cover the mark in all colours?
2. Does a black and white mark in a series registration offer the same protection as an individual black and white mark registration?
3. Does a colour mark in a series registration offer the same protection as an individual colour mark registration?
Hong Kong has very little case law on these points, and will often seek guidance from UK case law and practice. The Court of Final Appeal in the recent case of Tsit Wing (HK) Co., Ltd. & Ors v TWG Tea Co. Pte. Ltd & Ors FACV No. 15 of 2015 has confirmed that the UK position (based on the GLEE and THOMAS PINK decisions (discussed below) which touched upon issues regarding colour and black and white series registrations) is good law in Hong Kong.
Comic Enterprises Limited v Twentieth Century Fox Film Corporation  EWHC 185 (Ch) ("GLEE")
|A. colour||B. monochrome|
At issue in this case was the registration for THE GLEE CLUB figurative mark in series. The two marks were identical except that the first in the series claimed the colours red, black and white whereas the second was in monochrome. The defendant (Fox) challenged the scope of the series registration on the basis that the monochrome mark should be limited to the colour combination claimed in the colour mark since a valid series of trade marks can vary from one another only "as to matter of a non-distinctive character not substantially affecting the identity of the trade mark", which Fox claimed would not be the case if the monochrome version covered other colours as well.
The issue was pertinent to the case because, for the purpose of assessing infringement, the Court needed to identify a single point of comparison which embodied the distinctive features of the registered mark. The Court rejected Fox's arguments on the basis that:
- the distinctive elements of each version of the mark were the words and the device, and the colour claim did not substantially affect the distinctiveness of the mark; and
- because the colour version was "totally subsumed within the monochrome version", the Court held that the marks in the series would still provide a single point of comparison and adding the colour version to the series did not change the position that the monochrome version covered reproductions of the mark in a variety of colours.
Thomas Pink Limited v Victoria's Secret UK Limited (2014) EWHC 2631 (Ch) ("THOMAS PINK")
|A. Pink lettering with a black rectangular background||B. Pink lettering with a white rectangular background|
The THOMAS PINK case was different from GLEE as neither mark in the series was in monochrome. The series mark in this case consisted of lettering made up of lines in pink colour against a background. The difference between the two was the black versus white background.
The judge rejected the defendant's (Victoria's Secret) submission that the mark as registered consisted of the word PINK in the special form shown, presented in a rectangle in which the background may either be black or white, but not any other colour. He held that this did not provide a single point of comparison. The single point of comparison must be the word PINK in the special form and pink colour shown with a box, but the background colour in the box could be any colour.
The crucial point in THOMAS PINK, for our purpose, is that the judge has confirmed the principle that a trade mark registered in monochrome covered use in any colour whereas a trade mark registered in colour(s) covered that/those colour(s). The judge also confirmed the accepted position that "when faced with a series mark, it is necessary to bear in mind that there is only a single registered trade mark, and all the instances in the series are manifestations of the same mark".
So what constitutes a valid colour and black and white series?
Ascertaining a single point of comparison which embodies the distinctive features of the marks in a series would be helpful in assessing whether they are appropriate as series. The examples below demonstrate the appropriateness of series registrations:
The single point of comparison here is the mark "EURO$$$". Colour is a non-distinctive element of the mark, and its presence should not substantially affect the identity of the mark. Series should be appropriate.
The combination of colours in the colour mark substantially alters the distinctiveness of the mark. This is different from GLEE where the colours did not substantially alter the distinctiveness of the mark. Separate registrations should be appropriate.
Where does this leave Hong Kong?
Following the above decisions, we now know:
1. Generally, a black and white mark registered on its own covers all colours.
2. If a monochrome and coloured series mark is a reproduction of each other, save for the colours in the latter, and the colours are non-distinctive per se, in determining the single point of comparison, the colours do not matter and the series trade mark registration would protect the use of that mark in a variety of colours.
What is unclear is whether a monochrome series mark would provide the same scope of protection as an individual monochrome mark. We think not in some cases. For wider protection, brand owners should seek a separate registration for their mark in monochrome, block letters and standard font.
For example, registration of "EURO$$$" would cover the mark in all fonts and all colours, but it is arguable the single point of
comparison for the series mark below is limited to the mark "EURO$$$" in standard Times New Roman font in any colour.
3. Further, where a colour series mark is completely subsumed by the monochrome version, the colour will be considered non-distinctive. Therefore, if the colour(s) is a distinctive and important feature, a separate registration should be sought for the colour mark.