The global hit TV show, Glee, has found itself dragged into what is becoming a high-stakes trade mark dispute with a UK comedy club chain operating as ‘The Glee Club’.
The Glee Club, a UK-registered trademark owned by Comic Enterprises Limited (‘Comic’) brought infringement proceedings against Twentieth Century Fox (‘Fox’) for infringement of its trademarks in classes 25 (clothing) and 41 (entertainment services), and for passing off. Fox in turn counterclaimed for revocation of the registered trade mark on the basis of non-use in class 25 and for the majority of class 41 services. It also suggested the mark was invalid on the ground that ‘The Glee Club’ was descriptive of the services that Comic offered.
At trial earlier this year, Judge Roger Wyand QC found in Comic’s favour in relation to trade mark infringement, despite revoking its registration in class 25 and restricting its class 41 services – albeit not to the extent proposed by Fox. The allegations of invalidity by Fox were rejected, as was Comic's claim for passing off.
This month, the Judge came to consider the appropriate remedy for trade mark infringement and has ordered an injunction against Fox that it should cease naming the TV show ‘Glee’ in the UK, and make an interim payment to Comic of £100,000. However, in light of Fox's unsurprising confirmation that it is filing an appeal, the Judge has confirmed his injunction will not take effect until the issue has been addressed by the Court of Appeal.
Fans of the hit show will of course have an interest in the Court of Appeal’s decision, as will Fox given the efforts and expense it would be required to go to as part of any UK rebrand.
However, an appeal will also raise some points of legal interest. For example, one requirement for trade mark infringement is a likelihood of confusion on the part of the public between the marks. In this case the Judge noted that the evidence suggested the more probable scenario appeared to be members of the public confusing Comic's Glee Club with the TV show - as opposed to the more usual form of confusion whereby the defendant's brand is confused with the claimant's. Nevertheless the Judge found this ‘wrong way round’ confusion to be sufficient for infringement. It will be interesting to hear the Court of Appeal's view on this point.
Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion and home furnishings sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email email@example.com.