No GLEE for claimant as PCC case transferred to the High Court
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The Patents County Court (PCC) has granted a request by Twentieth Century Fox to allow its defence of a claim for trade mark infringement and passing off brought by Comic Enterprises to be transferred to the High Court.
The claimant, Comic Enterprises, is owner of four comedy venues in Birmingham, Cardiff, Nottingham and Oxford. The business started in 1994 and the claimant registered a device trade mark for ‘THE GLEE CLUB’ in classes 25 and 41 for clothing and entertainment services in 1999.
The defendant, the world famous film and television company, Twentieth Century Fox, produces the very popular television programme ‘Glee’. Glee first aired in the UK in December 2009 and is also now one of the most popular shows in the UK, protected by various UK and Community trade marks registered in 2010 for entertainment services and other goods and services (e.g. cosmetics, toiletries, games). Comic Enterprises had been aware of the Glee programme and the various trade marks since 2010, but proceedings did not commence until 2011 because the claimant anticipated that the programme might “fade with time”.
Comic Enterprises has sought to stop Twentieth Century Fox from using the name ‘Glee’ in the UK, claiming that it owns the rights to the name, and that the film studio is infringing its trade mark rights. Comic Enterprises has sought an injunction which, if granted, could mean that the Glee TV show could be forced off the air.
The issue for consideration in this application was whether it was appropriate, in all the circumstances, to grant a transfer of the claim to the High Court.
Twentieth Century Fox submitted that all or most of the relevant factors militated strongly in favour of transfer, including the complexity of the case; that it was likely to last longer than two days and that the costs order was likely to be high. Comic Enterprises contended that it was a small and medium-sized enterprise (SME) and an order for costs made against it would be devastating to its business. Comic Enterprises therefore submitted that its claim should remain in the PCC.
The following factors were taken into account by the PCC in granting the transfer to the High Court:
- the financial position of the parties;
- the value and complexity of the claim; and
- importance of the outcome to the public in general
However, the decisive factor was the way in which Comic Enterprises was seeking to run the proceedings, i.e., as a full scale High Court action with a claim for an injunction which would have devastating consequences for the defendant. This was inconsistent with the objective of the PPC which is to enable smaller undertakings access to cheaper and quicker actions in IP disputes. The PCC found that the claim was of very high value and that Comic Enterprises had not approached the litigation as a PCC claim. Further, the case could not be tried in two days under the PCC regime.
The decision provides some insight into the circumstances under which cases will be transferred to the High Court. In particular, the decision has demonstrated that SMEs are not automatically entitled to keep cases before the PCC, particularly in instances where they are attempting to run full scale High Court style litigation. The purpose of the PCC is to facilitate access to justice for smaller rights holders. However, this requires that claims fall realistically within the scope and purpose of the PCC.
This decision, together with the transfer of two other recent cases (Alk-Abello v Meridian Medical Technologies and A.S. Watson v Boots) from the PCC to the High Court, demonstrates that the PCC will not hear more complex or evidence-heavy cases, as two days will simply not be sufficient to consider the evidence and deal with the case justly.
While each case will turn on its own facts, it is useful for an SME considering the PCC as a forum for litigation to note the compromises that may need to be made in order for it to avoid the greater financial risks of High Court litigation and preserve the advantages offered by the PCC.