In a David and Goliath battle, a little UK based comedy club has taken on Twentieth Century Fox (Fox) for the second time — and won.
The claimant, Comic Enterprises Ltd (CEL) has operated a chain of UK comedy, live music and entertainment clubs called The Glee Club since 1994. The Glee Club name was first registered as a trade mark in 1999. In 2009, the Defendant first broadcast its television programme, GLEE in the UK.
GLEE! is a musical comedy series about a fictional American High School singing club. It achieved excellent viewing figures in the UK, as well as winning a host of awards, selling chart-topping singles and albums, selling out spin-off concert tours and licensing a wide range of merchandise — all of which was marketed and sold bearing the mark GLEE.
In 2011, the claimant filed proceedings against Fox, alleging that its activities amounted to infringement of its registered trade marks and passing off. At the trial in 2014, Mr Roger Wyand QC recognised that there was “a likelihood of confusion” and customers could potentially “believe there is a link” between the two parties. He held that Fox did infringe the mark under s.10(2) and s.10(3) of the Trade Marks Act 1994, but that there was no finding of passing off. CEL was granted a final injunction to stop Fox from calling its series GLEE in the UK, an enquiry as to damages or an account of profits and an interim payment of £100,000 on account of said damages or profits.
In February 2016, Fox appealed the decision, claiming that Mr Roger Wyand QC erred in his finding of infringement. Fox also applied to amend its defence and counterclaim to include the claim that the series mark (which is registrable in the UK pursuant to s.41 TMA 1994) and which was relied upon by CEL, was invalid because it was incompatible with EU law. CEL also cross-appealed, claiming that the trail judge erred in his finding that there was no case of passing off.
Mr Alan James of the UKIPO was consulted with regards to the EU and series mark point of law. He submitted that s.41 TMA 1994 is wholly compatible with EU law. However, there was little time at the first appeal to deal with this issue and so, this was to be given further direction at a later date.
Also, in its appeal, Fox argued that the trial judge gave too much consideration to the “wrong way round evidence”. This was evidence that came from witnesses who knew of the TV series and on hearing or seeing The Glee Club’s business, believed that it was associated or connected to the series. The judge had said that such evidence showed that there was a likelihood of confusion which supported the Claimant’s argument. Representatives for the Defence stated that the “wrong way round” confusion evidence was factually irrelevant to the issue of infringement and indeed the judge had not found any evidence of “right way round” confusion. On appeal, Lord Justice Kitchin rejected these submissions, stating that the evidence showed use of the sign GLEE by Fox was such that average consumers would make a connection between the sign and the Mark. He dismissed Fox’s appeal and CEL’s cross-appeal and agreed to decide the outstanding issue concerning the compatibility of s.41 of the 1994 Act with EU law at a separate hearing.
On April 8 2016, Lord Justice Kitchin stated: “It seems to me that [the need to find a single point of comparison] applies as much to similar marks that are registered as a series as it does to similar marks that are registered separately, and I am not persuaded that the registration of trademarks as a series is likely to cause any material difficulty in this regard in the future.
“I therefore reject the submission that the registration of trade marks as a series is highly misleading.”
He added that “a trade mark which has been registered as part of a series of marks is as self-contained, easily accessible and intelligible and will be perceived as unambiguously as a trademark which has been registered on its own”.
“For all of the reasons I have given, I have come to the conclusion that s.41 of the 1994 [UK Trade Marks Act] is compatible with the [EU trade mark] directive. I would also reject the argument that the trade marks in issue in this case are liable to be declared invalid. I would dismiss this appeal.”
It has been reported (but not yet confirmed) that Fox is going to seek the Supreme Court’s consideration of the issues.