The Court of Appeal has upheld a High Court ruling of 2014 that Twentieth Century Fox’s (“Fox”) “glee” television series infringed Comic Enterprises Ltd’s (“Comic”) trade mark for “the glee CLUB”. A parallel claim in the High Court for passing off failed. The Court of Appeal’s decision confirms that evidence of “wrong way round confusion” can be used in trade mark cases, in this case being evidence from members of the public who knew of the “glee” TV series and later saw or heard about Comic’s business and believed it to be connected with the TV series.
Comic operates live entertainment venues in some UK cities which predominantly consist of stand-up comedy and also some late-night live music. It opened its first venue in Birmingham in 1994 and has owned its trade mark (the “Mark”) since 2001. Since 2009, Fox has produced the “glee” TV series using the “glee” sign (the “Sign”) which has been hugely successful and has led to two world tours as well as DVDs, music sales and various merchandise.
The High Court decision
The High Court ruled in favour of Comic on the issue of trade mark infringement and awarded remedies including an injunction, publicity order, an option between damages and account of profits, interim payment (of £100,000) and delivery up of infringing copies of the show. The judge stayed the injunction pending the hearing of the appeal, and said that the defendant would be allowed to use a term such as “formerly known as Glee” in its new branding.
Issues in the Court of Appeal
Given certain errors in the High Court’s judgment, the Court of Appeal accepted it had to review the evidence and decide the issue of infringement itself. The Court considered the following claims:
- Infringement under section 10(2)(b) of the Trade Marks Act 1994: whether the Sign was similar to the Mark and was being used in relation to identical or similar goods and services and, as a result, there was a likelihood of confusion on the part of the public
- Infringement under section 10(3) of the Trade Marks Act 1994: whether the Sign was identical or similar to the Mark and its use, being without due cause, took unfair advantage of, or was detrimental to, the distinctive character or repute of the Mark
- Passing off: whether Comic had goodwill and reputation under the Mark and Fox misrepresented itself in a manner likely to lead the public to believe that the goods and services of Fox were those of Comic
“Wrong way round confusion”
The issue of wrong way round confusion was one of the key considerations of the Court and played a major part in establishing whether or not there had been any infringement. Such confusion occurs when a consumer familiar with the later sign is confused upon seeing the earlier trade mark. This is in contrast to “right way round confusion” where a consumer familiar with the earlier mark is confused upon seeing the later sign. There was a significant volume of wrong way round confusion evidence at trial, mainly coming from consumers who knew of the Fox TV series and upon seeing Comic’s business, believed it to be connected to the TV series.
Fox argued that such evidence should be rejected because it was to do with the Sign rather than the Mark and taking into account such evidence meant that a sign that did not infringe when it was first used might be found to infringe later once consumers had become familiar with it. The Court of Appeal rejected these arguments and said that the question was simply whether there was a risk the consumer might think the goods and services come from the same undertaking or economically linked undertaking and that the order in which the consumer comes across the marks is not significant. However, it should be assessed with care as it would be objectionable for a claimant to be able to rely on the defendant’s growing reputation to bolster a case that would have failed at the date of the defendant’s launch. This was a matter to be taken into account in assessing the value of any evidence of actual confusion, though, and not a reason to exclude it altogether.
In assessing infringement under s10(2) the Court of Appeal considered that there was a reasonable degree of similarity between the Mark and the Sign, particularly taking into account that the word ‘glee’ is the most prominent feature. As to the services, the core services for which the Mark was registered were live comedy entertainment, the provision of music hall services, the provision of live and recorded music, and the presentation of sound recordings. The Court of Appeal accepted that there were differences between these services and a TV series but added that it was possible to imagine live music and comedy shows that would be complementary to the glee TV series (and Fox had itself sanctioned two world concert tours). The Court of Appeal’s finding was therefore that the services were similar.
As to context of use, the Court of Appeal thought that although it did not seem believable that a consumer would think a comedy and music venue had produced an American television show, it was not unreasonable to suppose a consumer might think that the television show was in some way responsible for or connected to the comedy and music venue (especially given the Glee world tours).
In assessing the likelihood of confusion and taking into account the average consumer, the distinctiveness of the mark, the similarity between the Mark and the sign and similarity between the services and the context of use, the Court of Appeal considered the issue was finely balanced. However, the Court found that overall the evidence tended to support a likelihood of confusion.
On s10(3), the Court found that if there was a likelihood of confusion, average consumers believed or were likely to believe that the services came from the same undertaking, so a link was necessarily established. As to detriment, the court found that Fox’s use of “glee” was having a serious impact on Comic’s business and its ability to use the Mark for the purposes of identifying and promoting its venues as its own. As such, the evidence established a change in consumer economic behaviour, or evidence of a serious likelihood that such a change would occur in the future.
Comic’s claim for passing off had been rejected by the High Court and the Court of Appeal dismissed Comic’s appeal against this decision. The Court accepted that although there was evidence of actual confusion this did not necessarily mean that Fox was guilty of any actionable misrepresentation.
The judgment on infringement was made subject to an outstanding issue as to the compatibility of section 41 of the Trade Marks Act 1994, which allows series marks to be registered, with the EU requirement that a trade mark must be “a sign” in the sense of being a single sign and capable of being graphically represented as such. Although submissions from the UK IPO were received on this issue, the Court decided that given the limited time for the parties to consider those submissions, it would give further directions for the resolution of this issue after giving judgment.
The confirmation by the Court of Appeal that wrong way round confusion is admissible, and can be sufficient to establish infringement under s10(2) even without traditional “right way round confusion”, means that a later sign could build up enough of a reputation to cause confusion between it and an earlier (but less well known) trade mark even though there may have been no such finding when the later sign was first used. This highlights the importance of conducting thorough trade mark searches before branding and considering making amendments appropriate to the local market if necessary.