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20th Century Fox infringes Comic Enterprises’ trade mark for “The Glee Club”

20th Century Fox infringes Comic Enterprises’ trade mark for “The Glee Club”

Published: 02.06.14 at 15:54

Comic Enterprises Limited ('CE') runs a number of entertainment venues called "The Glee Club" across the United Kingdom, hosting mainly stand-up comedy and live music. In 1999, CE registered a series of trade marks which included the words "the glee club". In 2009, Twentieth Century Fox ('Fox'), a well-known media corporation, produced an American musical comedy-drama television series called "glee". Fox's television series was highly successful and was followed by "glee" concerts, sale of songs from the show, and merchandise bearing the word "glee".

CE sued Fox in 2012 for trade mark infringement under Section 10 Trade Mark Act 1994 ('TMA 1994') and for the tort of passing off under the common law. Fox denied any infringement and counterclaimed for partial invalidity on the grounds that the trade mark lacked distinctiveness and partial revocation of the trade mark on the grounds that the trade mark was not being used in relation to services for which it had protection.

The Relevant Law

A trade mark is a sign which can consist of words or symbols that serves to identify and guarantee the origin of particular goods or services and distinguish them from other goods or services.

Under Section 10(2) TMA 1994, trade mark infringement occurs where a person uses, in the course of trade, a sign which is identical or similar with the trade mark, in relation to goods or services similar or identical to those for which the trade mark is registered, such that the public is likely to be confused and associate the sign and the trade mark with one another.

Under Section 10(3) TMA 1994, trade mark infringement also occurs where a person uses, in the course of trade, a sign which is identical or similar to the trade mark and use of the sign takes unfair advantage or is detrimental to the reputation of the trade mark.

The law of passing off protects the 'goodwill' of a business, that is, the benefit of its reputation. Passing off occurs where a trader misrepresents its goods or services and attempts to 'pass them off' as being those of another trader or as being associated with another trader, and this misrepresentation causes damage to the second trader.

The Decision

Robert Wyand QC, sitting as deputy judge, found Fox had infringed CE's trade mark but held that the claim for passing off failed. The judge further held that the trade mark protection was too wide and it should be revoked in relation to specific services.

In finding that there had been an infringement of CE's trade mark under Section 10(2) TMA 1994, the judge concluded that the trade mark and Fox's sign were sufficiently similar and that there exists likelihood that the average consumer would be confused. In a classic trade mark case, the confusion would be such that people watching the show "glee" would believe it was linked to CE's venues. Interestingly, however, in this case there was evidence that after watching Fox's show and subsequently learning of CE's venues, people would associate CE's venues with the show. This is referred to as 'wrong way round confusion'. There have not been many decisions relating to this wrong way round confusion.  However, the judge held that all that is required is a likelihood of confusion and that it was not necessary to show 'right way round confusion'.

The judge also held that use of the TV show's sign was detrimental to the distinctive character of CE's trade mark under Section 10(3) TMA 1994. CE produced evidence that customers were deterred from visiting its venues as they believed it was linked to the TV show. It also presented evidence that from a marketing perspective the TV show was a threat to the trade mark.

An issue arose as to how the series marks were to be construed for the purposes of assessing infringement as one mark was monochrome and the other mark was in specified colours (see here). Fox argued that the court had to identify a single mark, which represented both marks to properly identify the scope of the trade mark. The court rejected this stating that the distinctive elements of the marks were identical.

In dealing with the counterclaim, the judge rejected Fox's claim that the trade mark was invalid because it was purely descriptive of the activities of the venue. However, the judge accepted that the scope of protection for the trade mark was too wide and held that it should be partially revoked in relation to services for which CE did not use the trade mark. This included clothing services, publication services and consultancy services.

Finally, the judge held that there had been no case of passing off as, even though there was confusion between the trade mark and the sign, it was not sufficient to cause damage to CE.

Practical Considerations

The question of what remedies to be granted was left to a later hearing. In theory, an injunction could be granted restraining Fox from using its trade mark, forcing them to rebrand the show and all related merchandise. Compensation is also likely to be paid to CE; the quantum of this compensation will be a matter for the court to decide but it is predicted to be substantial.

Fox has indicated it will appeal the decision. The decision in the case is seen as a huge bolster for smaller businesses like Comic Enterprises against the Goliath of Twentieth Century Fox. However this assessment should be reserved until any decision as to the consequences of infringement is made and the Court of Appeal has made a decision on any appeal.

Article provided by students at BPP Law School.

Photograph (some rights reserved) by labanex

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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