Has the curtain come down on Twentieth Century Fox’s final stab at defending the Glee television series against a trade mark claim by a chain of UK comedy clubs called the Glee Club?
In what has been presented as a “David and Goliath” battle, the UK club chain, which dates back to 1994, sued Fox in 2011 after it launched the very successful Glee TV series in the UK. Rather unusually, the clubs claimed “wrong way round confusion”. This was based on evidence that members of the public who were aware of the TV show and then came across the clubs for the first time thought that they were derived from the show, rather than the other way around.
The club chain won its trade mark claim based on such confusion at the English High Court in 2014 and at the Court of Appeal in 2016, subject to one final issue which the Court of Appeal has now ruled on. Fox counter-claimed that the club’s trade mark registration for the Glee Club logo was invalid under EU law, because it consisted of a “series” of two versions of the logo (one in colour, and one in black and white). If the registration was invalid, the club’s case would collapse, because it only won based on that registration, and lost its separate passing off claim.
The Court of Appeal ruled that the club’s trade mark registration was valid under EU law. The UK rules allow a “series” of different versions of a mark to be bundled together under a single registration, provided the various versions are materially identical. The Court of Appeal held that this system is compatible with harmonised EU trade mark law (which does not itself provide for such a system), and that the two versions of the Glee Club logo amounted to a valid series. In particular, the UK system did not contravene the EU requirement that a trade mark must be capable of being graphically represented in a clear, self-contained, easily accessible, intelligible, durable and objective manner. The Court held that it was not necessary to refer this case to the EU Court of Justice, since the position was sufficiently clear.
In principle, the decision removes the uncertainty over the validity of tens of thousands of UK marks registered under the “series” system (which, in particular, can offer a degree of cost-savings for registrations of applicable bundles of marks). However, in order to amount to a valid series under UK law, such marks will still need to “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” (under section 41(2) of the Trade Marks Act 1994).
Subject to any successful appeal by Fox to the English Supreme Court, or an out-of-court settlement between the parties, Fox will need to face the music of the various sanctions that were stayed pending the outcome of the appeal. In principle, Fox will be required to rename the Glee TV series in the UK, in any ongoing or future reruns and DVD and digital sales (although they can refer to the fact that the series was previously known as Glee). Fox will also need to deliver up or relabel any physical and digital stock in its control (but not stocks already supplied to customers). Fox has been spared from having fully to disclose its accounting records for the series, but the club will be entitled to pursue it for damages or an account of Fox’s UK profits for the series (Fox having been previously ordered to make a £100,000 interim payment).
This is the first time that an English Court has considered and held that the UK trade mark “series” system is compatible with EU law. Unsurprisingly, Fox is reportedly seeking to appeal this decision to the Supreme Court – and could possibly again seek a reference to the EU Court of Justice – since the whole case could ultimately hinge on this issue. Further, although this is not the first time English Courts have taken “wrong way around” confusion into account, this might be another ground for appeal.
Case  EWCA 455