In a judgment handed down on Friday 7 February 2014, the High Court ruled that Twentieth Century Fox’s television series “glee” infringed Comic Enterprises’ UK trade mark registration for “The Glee Club” – comprising a device mark for the words THE GLEE CLUB centred within a spotlight - which they had filed as a series application back in June 1999.
Set at a fictional American High School, Fox’s television series “glee” follows the lives of members of an after-school club who perform covers of various songs. Comic Enterprises, on the other hand, is the owner of four comedy clubs in England, the earliest of these founded in Birmingham in 1994, which regularly host live music, stand-up and cabaret-style events.
The case in question began back in September 2011 when Comic Enterprises Limited brought proceedings for trade mark infringement and passing off before the Patents County Court (now known as the Intellectual Property Enterprise Court), claiming that there was confusion amongst the general public as to whether their comedy club, branded as The Glee Club, was linked to Fox’s successful television series. In March 2012 and hailed as an initial victory for Fox, Judge Birss QC referred the dispute up to the High Court where he felt that the full legal implications of the case could be considered in earnest.
In the judgment, Roger Wayand QC, sitting as Deputy Judge in the High Court, found that there was a degree of similarity between the mark and sign, albeit “not of the highest order”. Nevertheless, on the basis of the evidence submitted, Mr Wayand QC deduced that in this instance there had been “wrong way round” confusion: those who were already aware of the hit television programme, and who then came into contact with the Claimant’s business, believed that the latter was associated with the TV show “glee”, and not the other way round. The Deputy Judge held that this evidence was sufficient to establish a likelihood of confusion under s.10(2)(b) of the 1994 Trade Mark Act and that, in order for a trade mark to have been infringed, the likelihood of confusion need not necessarily have been the “right way round”.
Comic Enterprises also claimed infringement under s.10(3) of the 1994 Act, arguing that use of the sign “glee” by Fox had caused dilution and blurring to their brand. Mr Wayand QC held that there was sufficient evidence to establish that use of the sign by Twentieth Century Fox had caused damage to the Comic Enterprises’ business, in the light of evidence showing that potential customers were snubbing shows held at The Glee Club in the belief, that the business was connected the TV series. In addition, Comic Enterprises submitted that they had had to adapt their marketing plan in an attempt to distinguish their business from the TV show, by using slogans such as “We’re Glee and we’re not on TV”. The Deputy Judge held that this evidence amounted to more than “mere supposition”, as laid down in November’s 2013 CJEU judgment on WOLF HEAD, and was sufficient to demonstrate a change in economic behaviour. Alongside a likelihood of confusion, the Deputy Judge therefore found that Comic Enterprises had suffered dilution of their mark, through Fox’s use of the sign.
In the event that Twentieth Century Fox appeal the Decision, this “wrong way round” confusion will undoubtedly be explored further. In the meantime, it’s certainly no small victory for the SME in the face of the giant Fox.