Confusion, misrepresentation, passing off and trade marks

The Court of Appeal has ruled that “wrong way round” confusion (e.g where consumers are first aware of the infringing mark and confuse it with the original, rather than the other way round) is relevant both for trade mark infringement and passing off. However, whilst upholding the finding of trade mark infringement, there was no passing off because whilst there had been confusion between the two marks, there had been no misrepresentation by Fox in producing its Glee TV show that caused any damage to the owners of the Glee comedy clubs. This demonstrates one advantage of relying on trade marks rather than merely passing off.

Songs and copyright

Warner/Chappell have now agreed to re-pay $14m in royalties it received for commercial use of the song Happy Birthday and to acknowledge that the song is in the public domain. For more information please see our previous blogs on 23 September 2015 and 12 November 2015 .