This recent hearing is the latest instalment in the "Glee" trade mark dispute between Comic Enterprises and Twentieth Century Fox. The Court of Appeal upheld the 2014 High Court decision that the use of the sign "Glee" by Twentieth Century Fox, in respect of its well-known TV programme, infringes a series of registered trade marks owned by Comic Enterprises Ltd, which runs a collection of comedy clubs with the name "Glee" across the UK.
The claimant, Comic Enterprises Ltd (Comic), has operated live entertainment venues across the UK since 1994 under the names "Glee" and "The Glee Club" where stand-up comedy and live music are performed. Comic has owned a UK trade mark for a series of two figurative marks since 2001 which feature "Glee" (the Mark). The veritable Goliath in the case, media company Twentieth Century Fox (Fox), produced the well-known American television series "Glee" which was first broadcast to the UK in late 2009. The series has resulted in DVD releases, concert tours, albums and merchandising.
Comic issued proceedings against Fox in September 2011, claiming trade mark infringement under sections 10(2) and 10(3) of the Trade Mark Act 1994 (theAct), and passing off. At the 2014 High Court trial, the Judge ruled that the "Glee" television series did infringe Comic's Mark but dismissed the claim for passing off. Additionally, although the Judge found that Comic's Mark was validly registered, it was partially revoked for non-use in class 25 (clothing) and the scope of cover for entertainment services in class 41 was reduced.
Both parties appealed the decision: Fox against the findings of trade mark infringement and Comic cross-appealed the passing off decision.
Court of Appeal decision
In a lead judgment delivered by Kitchin LJ, the Court of Appeal rejected all appeals.
Trade mark infringement
Crucial to the trial Judge's finding of a likelihood of confusion was 'post-dated evidence'; ie evidence from consumers who made a connection between Fox's sign and Comic's Mark when later confronted with Comic's Mark because of their prior exposure to the "Glee" TV series. Fox argued that this "wrong way round confusion" was irrelevant to s10(2) infringement as a matter of law and was therefore inadmissible.
The Court of Appeal rejected these arguments holding that the order in which a consumer came across Fox's sign and Comic's Mark was irrelevant: the question of infringement simply came down to whether there was a risk that the average consumer might think that the two entities were connected. Notably, the Court of Appeal confirmed that "wrong way round confusion" was admissible as it aided the Court in answering the question of whether there was a likelihood of confusion in light of Fox's actual and threatened activities.
Fox's appeal on s10(3) was also unsuccessful. The Court of Appeal upheld the finding that the similarity between the Mark and sign gave rise to a 'link' in the minds of consumers which caused those who did not like the TV series "Glee" to change their behaviour to the detriment of Comic. Though the Court recognised that Fox had adopted "Glee" in good faith, there had nonetheless been damage to reputation and distinctive character of Comic's Mark.
A particularly interesting aspect of the appeal was that Fox also applied for permission to introduce a new claim that s41 of the Act, which governs the registration of series marks (which included Comic's Mark), is incompatible with the requirement at EU Directive level that a trade mark must be a single sign which is capable of being graphically represented. Despite a UK IPO submission in support of series trade marks as a bundle of separate trade marks each entitled to protection under EU law, this issue remains to be fully determined by the Court of Appeal. If Fox pursues this avenue, it could potentially have a significant impact on proprietors of series trade marks, threatening as it does the very legality of such marks.
Cross-appeal on passing off
Comic failed in its cross-appeal with the Court of Appeal emphasising a distinction between confusion and misrepresentation – a prerequisite for a finding of passing off. The Court of Appeal agreed that Comic had established goodwill in "Glee" in respect of its venues at the time of the TV series launch but the subsequent confusion was not sufficient to make out misrepresentation by Fox.
The Court of Appeal's confirmation that "wrong way round confusion" is not only admissible but sufficient to establish infringement under s10(2) of the Act in the absence of "traditional" confusion is notable. Not only would it appear that the order in which the relevant marks and signs are encountered is irrelevant, but it follows that later signs can become infringing as a victim of their own success – it was the sufficient reputation of Fox's TV series that gave rise to "wrong way round confusion" in this case.
In the course of proceedings the parties both made interesting concessions. Comic stated that they would not pursue an injunction against Fox, but would be content to settle for an account of profits only. After all, it could be argued that the damage to Comic's business would not be repaired by an injunction, since the "Glee" TV programme was so well known already. Fox, perhaps recognising the disparity in size between the parties, conceded that if successful they would not seek to recover their costs from Comic.