The Court of Appeal has found that the US television series “Glee” (the Show) infringed a UK comedy club’s trade mark registration for “the glee CLUB” (the Mark). The Show’s producer, 20th Century Fox (Fox), now faces having to re-brand and account to the comedy club for the profits it has made using the “Glee” sign (the Sign).
WHAT YOU NEED TO KNOW
The decision clarifies that, for trade mark infringement, consumer confusion can be demonstrated regardless of the order in which the consumer becomes aware of the offending sign and the registered mark.
The decision also demonstrates the importance of conducting thorough trade mark searches prior to branding your product or services and, where necessary, making amendments appropriate to the local market.
Comic Enterprises Ltd (the Club) runs live entertainment venues in several UK cities, principally hosting stand-up comedy but also showing live music. Each venue is branded “the glee Club” with the backdrop to the stage being the word “glee” The Club registered the Mark (a series of two device marks, as shown below) in 1999.
The Show follows an American high school singing club and was first broadcast in the UK in December 2009. The Show was very successful in the UK and won multiple Emmy awards and Golden Globes (with circa 2.2m UK viewers per episode). Fox also sold products related to the Show including music and world concert tours.
The Club found that its customers believed it was associated with the Show and, as a result, were actually being put off from visiting its venues. To remedy this, the Club was being forced to conduct expensive marketing campaigns to disassociate itself from the Show. In 2011 the Club issued passing off and trade mark infringement proceedings against Fox under s.10(2)(b) and 10(3) of the Trade Marks Act 1994 (the Act) on the basis that:
- passing off - the Club had goodwill and reputation attached to its provision of services under the Mark and the Show was misrepresenting itself in a manner likely to lead the public to believe that the Show’s goods and services were the goods and services of the Club;
- s.10(2)(b) - the Sign was similar to the Mark and was being used in relation to identical or similar goods or services and, as a result, there was a likelihood of confusion on the part of the public; and
- s.10(3) - the Sign was similar to the Mark and took unfair advantage of, and was detrimental to, the distinctive character and repute of the Mark.
Fox argued that: (i) the Sign and the Mark were not used in relation to similar goods or services; and (ii) the Club’s evidence of confusion amongst consumers was inadmissible as the majority of the Club’s witnesses knew of the Show first and, on becoming aware of the Club, were misled into thinking that the Club was in some way connected to the Show (i.e. they knew the Sign first and the Mark second: the confusion was the “wrong way round”).
The High Court rejected the Club’s passing off claim but found in its favour in relation to s.10(2)(b) and s.10(3). The judge awarded the Club:
- a final injunction (stayed pending the appeal decision) to restrain Fox from using the word “glee” as the name of its series. The judge said Fox could rebrand its show using a term such as the show “formerly known as Glee”;
- a publication order, allowing the Club to draw its customers’ attention to the judgment;
- damages or an account of profits (with an interim payment of £100,000); and
- delivery up of all infringing DVDs/Blu-rays/digital copies of the show (i.e. those entitled “Glee”) currently in Fox’s possession, power or control. The judge did not consider it proportionate to order delivery up of copies which were already with third parties.
Fox appealed the finding of infringement and the Club appealed in relation to passing off.
The Court of Appeal found the High Court’s analysis unsatisfactory and therefore conducted a fresh analysis of: (i) the similarity of the goods and services; and (ii) the evidence of confusion. The court rejected Fox’s arguments and found that:
- the two marks were being used in relation to similar goods or services (for example both were used for live music shows); and
- the order in which a consumer became aware of the two marks was irrelevant and the evidence put forward by the Club was therefore admissible. The question was simply whether there was a risk that a consumer might think that the goods and services of the Club and the Show came from the same business; the court found there was such a risk here.
The Court of Appeal again upheld Fox’s infringement, since:
- by the time the Show came to the UK in December 2009, the Mark had developed a sufficient reputation to qualify for protection;
- although Fox had adopted the sign in good faith, it could have used an alternative name; and
- the evidence showed that Fox’s use of the sign was detrimental to the Club’s business and its ability to use the Mark for the purposes of promoting its venues as its own. As a result, actual and potential consumers were changing their economic behaviour (for instance, the Club had to distribute thousands of flyers in Oxford to quell the confusion).
The Court of Appeal upheld the judge’s decision and concluded that, although the Club had goodwill and reputation in the Mark (the first limb of the passing off test), there was no evidence that the Show was misrepresenting itself (the second limb, before needing to consider whether any confusion was caused). By contrast, misrepresentation does not form part of the test for trade mark infringement; this distinction explains the Club’s success in the infringement claim but not the passing off claim.
The case demonstrates the utility of a registered trade mark as even in “David and Goliath’” situations where a mark is dwarfed by an offending sign, the registered trade mark owner’s rights will be upheld whilst a similar claim without a registered trade mark, the claim for passing off, would fail.