In the latest instalment of the trademark dispute between Comic Enterprises and Twentieth Century Fox, the Court of Appeal upheld the 2014 High Court decision that use of the sign 'Glee' by Twentieth Century Fox in respect of its well-known television programme infringed a series of registered trademarks owned by Comic Enterprises Ltd, which runs a collection of comedy clubs named 'Glee' across the United Kingdom.

Facts

Claimant Comic Enterprises Ltd has operated live entertainment venues across the United Kingdom since 1994 under the names 'Glee' and 'The Glee Club', where stand-up comedy and live music are performed. Since 2001, Comic has owned a UK trademark for a series of two figurative marks which feature the word 'Glee'. The veritable Goliath in the case, media company Twentieth Century Fox produces the well-known US television series Glee, which was first broadcast to the United Kingdom in late 2009. The series has resulted in DVD releases, concert tours, albums and merchandising.

Comic issued proceedings against Fox in September 2011, claiming trademark infringement under Sections 10(2) and 10(3) of the Trademark Act 1994 and passing off. At the 2014 High Court trial, the judge ruled that the Glee television series infringed 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 appealed the findings of trademark infringement, while Comic cross-appealed the passing-off decision.

Decision

In a lead judgment delivered by Lord Justice Kitchin, the Court of Appeal rejected all appeals.

Trademark infringement

Crucial to the trial judge's finding of a likelihood of confusion was 'post-dated evidence' – that is, 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 television series. Fox argued that this 'wrong way round confusion' was irrelevant to Section 10(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.

Further, the trial judge's ruling that there was a degree of similarity between Comic's mark and Fox's use of the word 'Glee' was upheld. Fox's argument that Comic's mark was purely a logo, and that the word 'Glee' was descriptive, was unsuccessful. The Court of Appeal ruled that the key element of Comic's logo mark was the word 'Glee' in the context of glee clubs; therefore, Fox's television series about a glee club amounted to a "reasonable degree of similarity".

Fox's appeal on Section 10(3) was also unsuccessful. The Court of Appeal upheld the finding that the similarity between Comic's mark and Fox's sign gave rise to a link in the minds of consumers, which caused those who did not like the television series Glee to change their behaviour to the detriment of Comic. Although the court recognised that Fox had adopted 'Glee' in good faith, there had nonetheless been damage to the 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 Section 41 of the Trademark Act – which governs the registration of series marks (which included Comic's mark) – was incompatible with the requirement at EU directive level that a trademark be a single sign which is capable of being graphically represented. Despite a UK IP Office submission in support of series trademarks as a bundle of separate trademarks that are 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 trademarks, 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 television series launch, but the subsequent confusion was insufficient to make out misrepresentation by Fox.

Comment

The Court of Appeal's confirmation that wrong way round confusion is not only admissible, but sufficient to establish infringement under Section 10(2) of the Trademark 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 television series that gave rise to wrong way round confusion in this case.

In the course of the proceedings, both parties made interesting concessions. Comic stated that it 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 television programme was so well known already. Fox – perhaps recognising the disparity in size between the parties – conceded that if successful, it would not seek to recover costs from Comic.

For further information on this topic please contact David Cran or Louise Morgan at RPC by telephone (+44 20 3060 6000) or email (david.cran@rpc.co.uk or louise.morgan@rpc.co.uk). The RPC website can be accessed at www.rpc.co.uk.

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