Comic Enterprises Ltd (Comic Enterprises) operates a number of UK entertainment venues which offer both live and recorded musical entertainment in addition to their regular fare of stand-up comedy acts.  Comic Enterprises is the owner of trade mark number 2200698 (shown below) with respect to certain services in class 41, including live comedy services. The mark has been registered in the UK since 2001.

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Since 2009, Twentieth Century Fox Film Corporation (Fox) has produced the highly successful 'glee' TV show about the fictional McKinley High School singing club. Since that time, there have been live concert tours, Fox has licensed a wide range of merchandise, and the songs from the hit TV show have been released as both singles, and albums, through the iTunes store worldwide. The American musical comedy series has achieved high publicity in the UK and abroad: viewing figures in the UK for the second series alone averaged 2.2 million per episode.

The case at first instance

In 2014 Mr Roger Wyand QC, sitting as deputy judge in the High Court, held that Fox had infringed Comic Enterprises' trade mark under s10(2)(b) and s10(3) of the Trade Marks Act 1994 (UK Act) but that Comic Enterprises could not sustain a claim in passing off.

The appeal

Fox appealed, arguing that the trial judge fell into error in finding trade mark infringement, while Comic Enterprises cross-appealed on the finding that there was no passing off.

Interestingly, Fox also criticised the reasoning of the trial judge regarding the probity of the 'wrong way round' evidence of confusion tendered by Comic Enterprises at trial - that is, evidence of individuals who knew of Fox's glee TV show, and upon seeing Comic Enterprises' stand-up comedy business, believed it to be connected to the TV series. Fox argued that such evidence was given undue weight in the Court's finding of infringement, and was irrelevant to the issue of trade mark infringement both as a matter of fact, and as a matter of law.

The Court of Appeal reviewed the evidence afresh. Kitchin LJ, delivering the judgment of the Court, held that 'wrong way round' confusion evidence was admissible. Kitchin LJ, finding the evidence 'quite powerful', noted that the distinction between 'wrong way round' evidence and 'right way round' evidence may be 'nothing more meaningful' than the order in which the consumer happened to come across the mark and the sign. Moreover, his Lordship reasoned, evidence of 'wrong way round' confusion might, in fact, be probative of a risk of 'right way round' confusion.

It was suggested by Fox's counsel that this might allow a claimant to be able to rely on a 'growing reputation' to bolster a case which would have failed at the point in time of the defendant's launch. Kitchin LJ denied that this should exclude such evidence, instead suggesting that it should be taken into account in assessing the value to be placed on evidence of actual confusion. His Lordship considered that 'wrong way round' evidence would be assessed with care, along with the other evidence tendered, in order to determine whether it is of any assistance in answering the statutory question in the context of any particular case.

Does the 'wrong way round' rub the wrong way Down Under?

Fox's appeal would likely have a different result in Australia.  In fact, arguments based on 'reverse evidence' were heard in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901. In that case, the parties accepted that the s 60 ground of opposition in the Trade Marks Act 1995 (Cth) is directional – that is, it requires that any confusion resulting from deceptive similarity is attributable to the reputation of the earlier mark (with respect to the same goods or similar services) rather than due to any notoriety of the newer mark. This is in contrast to the UK statute, which does not appear to dictate consideration of the marks in a particular chronological order.

However, not all sections of the Trade Marks Act (1995) (Cth) appear to be directional. In the Torpedoes decision, Bennett J found that the s 43 ground of opposition, which prohibits registration of a mark if it contains a connotation that is likely to cause confusion, was non-directional. However, her Honour considered that s 43's non-directionality supported the view that direction was relevant to other sections of the Act, such as s 44, in which an application 'must be rejected if the applicant's mark is... deceptively similar to a trade mark registered by another person...' (emphasis added).

Don't stop believing

Back in the UK, while Kitchin LJ affirmed the trial judge's finding that there was no passing off despite Fox's trade mark infringement, it seems that the legal journey might still be far from over. The Court of Appeal reserved, until a later date, consideration of Fox's allegation that Comic Enterprises' registered mark was invalid on the basis that s 41 of the Act (which allows a series of marks to be registered) is incompatible with the requirement that a trade mark must be a 'sign' pursuant to Articles 2 and 3 of Directive 2008/95/EC. Stay tuned for the next episode.