On July 18th a U.K. judge ruled that Twentieth Century Fox Films must change the name of its television show, “Glee”, because it infringes the name of a chain of British comedy clubs named “The Glee Club.”  The judge ruled in favor of the clubs on the theory of “wrong way round” confusion, which is known as “reverse confusion” in U.S. jurisprudence.  Traditionally, courts address likelihood of confusion in trademark cases by determining whether customers mistake the junior user’s products as coming from the same source as those of the senior user.  Reverse confusion, on the other hand, arises when the junior user so saturates the market with advertising and other promotion of its mark that the consuming public comes to believe that the senior user’s products come from the same source as those of the junior user.  Fox’s promotion and broadcast of “Glee” in the UK market was apparently so overwhelming that the judge believed that consumers were likely to believe that the comedy clubs were also Fox businesses.

The “Glee” case follows a January decision by the Opposition Division of the Office for Harmonization in the Internal Market (OHIM), the entity that administers the European Community Trademark (CTM), rejecting an opposition filed by the popular American website, Pinterest, against the UK company Premium Interest Ltd.’s application to register the trademark PINTREST in the EU.  Premium Interest applied to register PINTREST in the EU after Pintrest had commenced business and applied to register its mark in the U.S., but before Pintrest applied for registration in the EU.  Pintrest was unable to prove to OHIM’s satisfaction that its PINTREST mark had sufficient “local significance” in the UK, so OHIM refused to recognize any unregistered rights in the PINTREST mark in Europe.  The decision cast a serious cloud over Pintrest’s right to use its mark in Europe.

These cases are stark reminders of two very important strategic considerations:

  1. U.S. trademark owners should conduct trademark searches both domestic and international markets that are of potential significance, even if the foreign search is merely a “knock-out” search for identical marks; and
  2. U.S. trademark owners should develop and implement strategies for global trademark protection sooner, rather than later, in order to avoid ending up in the same position as Pintrest in the EU and, perhaps, elsewhere.

While international searching and registration are costly, the cost to either defend an infringement suit or change branding in an entire geographic region can be exponentially more.  With some forethought it is possible to spread the costs of searching and registration over several months or years.  Sullivan & Worcester’s Intellectual Property Group provides tailored, strategic advice regarding domestic and international trademark portfolio development.