With the assistance of Barker Brettell LLP’s Lucy Walker, Comic Enterprises Limited, which trades as “The Glee Club” (Glee) has successfully sued 20th Century Fox (Fox) on the basis that their TV show GLEE infringes Glee’s UK trade mark registration. 

This case highlights the importance of trade mark rights and how, as long as you protect your rights, you can be in a position to prevent a third party from infringing the same, even if you find that you are faced with a “David and Goliath” situation and you are “David”. 

Background

Glee first opened its doors in Birmingham in 1994 as a live comedy and music venue.  Since then, Glee has gone on to open venues in Cardiff, Oxford and Nottingham and has hosted some of the biggest names in comedy, including Michael McIntyre and Lee Evans, and also in music, including Adele.

In 1999, with Barker Brettell’s assistance, Glee registered a UK trade mark application for the mark as shown above, in order to protect their brand.

The application was filed as a series of two marks, one for the black and white version of the mark and one for the colour version.  The registration covers classes 25 (clothing type goods) and 41 (entertainment services, including comedy and music).

In 2009, Fox launched a television show under the name GLEE which mainly focused on an American high school singing club at a school.

Glee found that as a result of Fox’s show, members of the public were confusing their clubs with Fox’s TV show, with many consumers believing there to be some link or association between the parties.  As a result of this confusion, Glee brought legal proceedings against Fox for trade mark infringement and passing off.

The decision 

Mr Wyand QC, sitting as deputy judge, held that while there was no passing off, Fox’s use of the GLEE name, as the name of their show, did amount to trade mark infringement under section 10(2) and (3) of the UK Trade Marks Act 1994. 

Mr Wyland QC had a number of issues to consider in the trial but of most relevance were the following questions:

  • How is a series mark to be construed for the purposes of assessing infringement?
  • What is the relevance of ‘wrong way round’ confusion when assessing a likelihood of confusion?
  • What types of harm are sufficient to establish infringement under section 10(3)?
  1. How is a series mark to be construed for the purposes of assessing infringement?

The UK trade mark system allows for the filing of an application which covers a series of marks.  A series of marks means a number of marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character, not substantially affecting the identity of the trade mark.

Fox claimed that as Glee’s trade mark was for a series, to assess infringement the court had to identify one of the marks to act as a representation for both marks applied for in the series and that this would logically be the first mark in the series.  In this case, because the first mark in the series claimed certain colours, Fox asserted that the colour claim applied to both versions of the mark for the purposes of assessing infringement.

Mr Wyland QC rejected this argument, explaining that both marks were relevant for the purposes of infringement.  In any event, the colour combination was not part of the distinctiveness of the mark but simply a feature.  In any event, both marks were distinctive due to the word and devices incorporated therein, whether the mark was in colour or black and white. 

  1. What is the relevance of ‘wrong way round’ confusion when assessing a likelihood of confusion?

The evidence of confusion presented to the court included instances where members of the public assumed Glee’s venues were linked to the TV show.  Mr Wyand QC referred to this as ‘wrong way round’ confusion.

Fox argued that the court should not rely on evidence of such confusion, because such confusion only arose as a result of the show being extremely successful.  

Mr Wyand QC held that what was relevant was that there was confusion or a risk of confusion between the parties; it was not relevant which way the confusion took place.  Indeed, Mr Wyland QC commented that if there had been no confusion, surely Fox would have pointed this out rather than dispute the “technical” nature of the confusion which took place.

  1. What types of harm are sufficient to establish infringement under section 10(3)?

Section 10(3) infringement looks to prevent use of a latter sign which takes unfair advantage of, or is detrimental to the distinctive character or repute of, the earlier trade mark.

Mr Wyand QC concluded that Glee’s mark had a reputation, their mark was similar to Fox’s sign, and that the use of this sign would call to the mind of the average consumer Glee’s earlier mark.  Therefore, it was for the courts to look at whether Fox’s use took unfair advantage of, or was detrimental to the distinctive character or repute of, Glee’s earlier trade mark.

Fox relied on the decisions of Intel (Case-252/07) and Wolf Head (Case C-383/12) whereby it was held that for a successful claim of infringement under section 10(3), you had to demonstrate a change in economic behaviour.  Fox argued that there had been no change in the economic behaviour of Glee’s customers 

Mr Wyand QC found that Glee had, however, adduced evidence that potential customers were discouraged from attending their clubs in the mistaken belief that they were linked to the television series.  Glee had also provided evidence from their marketing company demonstrating that the television series presented a real threat to their brand, which had to be addressed in its marketing programme.

Therefore Mr Wyand QC concluded this was sufficient evidence to show that Glee’s trade mark was suffering detriment though swamping.  He noted that “[i]t is not necessary for a Claimant under section 10(3) to produce evidence quantifying a change in economic behaviour.  All that is needed is objective evidence that there is or will be such a change.”

Conclusion

The benefit of protecting your brand using the trade mark system is clear; by having an existing registration Glee was able to assert that IP right against Fox in order to defend their name and reputation. Despite the difference in size of the companies, Glee was able to win the “David and Goliath” battle by having the force of a trade mark registration on their side.