Earlier this year, the High Court decided that Twentieth Century Fox’s use of the word GLEE as the title of its popular television show set in a fictional US high school infringed a UK trade mark registration for a logo incorporating the words ‘The Glee Club’ owned by Comic Enterprises Limited. Comic Enterprises operates a chain of live entertainment venues in the UK. Its trade mark registration, dating from 1999 (some ten years before the US television show first aired in the UK) covers a range of entertainment services. The Court heard that people had mistakenly believed that Comic Enterprises’ venues were linked to the television show. In some cases, this had deterred those people from visiting the venues.
As a follow-up to the decision, the Judge has now ordered that Fox “cease naming” the show GLEE in the UK. Fox are entitled to appeal to the Court of Appeal but, if the High Court’s decision is upheld, they will have to use a different name for their show when it is next aired in the UK.
Production companies, broadcasters, and indeed anyone planning to launch a new brand on a global scale should take note of this decision. Undertaking searches of the trade mark registers in all countries of interest and filing trade mark applications for the brand name prior to launch, can be an expensive, time-consuming exercise but is crucial if trade mark disputes are to be avoided. A particular name may be available in some countries but already registered by third parties in others. If Fox are ultimately required to change the name of their show in the UK, they would be wise to carry out a fresh trade mark search to ensure that the new name they pick has not also been taken by someone else.