Comic Enterprises v 20th Century Fox [2014] EWHC 185, 7 February 2014A comedy club has successfully taken on 20th Century Fox in a trade mark infringement case concerning its use of "glee".Background
Comic Enterprises v 20th Century Fox [2014] EWHC 185, 7 February 2014
A comedy club has successfully taken on 20th Century Fox in a trade mark infringement case concerning its use of "glee".
Background
Since 1994, Comic Enterprises Limited ("Comic Enterprises") has been operating comedy clubs and providing live music in various venues in UK cities under the name "The Glee Club". On 19 June 1999, Comic Enterprises protected its brand by filing and obtaining UK Registration No 2200698 for the mark THE GLEE CLUB (series of 2).
However, in December 2009, 20th Century Fox ("Fox") started broadcasting the now popular television series "glee" in the UK. Comic Enterprises complained that customers were confused that its comedy club was in some way connected to the TV show and brought an action against Fox for infringement under s10(2), 10(3) Trade Marks Act 1994 and passing off. (The claim was originally transferred in March 2012 from the Patents County Court (now renamed Intellectual Property Enterprise Court) to the High Court (click here for details on that judgment)).
Decision
Fox unsuccessfully counterclaimed that Comic Enterprises' trade mark was invalid for being descriptive. It was, however, successful in partially revoking the mark for non-use with regard to clothing in class 25 and for some of the entertainment services within class 41.
Comic Enterprises succeeded in its claim under s10(2) by demonstrating that there was a likelihood of confusion amongst customers. Witnesses gave evidence of tweets and comments on Facebook that showed confusion. Comic Enterprises also provided evidence that its marketing campaign had to be adjusted to refer to the fact that it was not connected to the TV show, for example using the slogan "We're Glee and we're not on TV".
Fox argued that the judge should exercise caution as the confusion was the "wrong way round". The judge dismissed this and held that it was not necessary in a claim for infringement of a registered trade mark to show that there was "right way round confusion". All that was required was a likelihood of confusion.
Comic Enterprises also succeeded in its claim under s10(3) that the use by Fox of "glee" was without due cause and was detrimental to the reputation or distinctive character of Comic Enterprises' trade mark. Fox argued that there was no evidence of a change in economic behaviour of Comic Enterprises' customers as required in the Intel case (C-252/07). However, Comic Enterprises had provided evidence that customers were being put off attending the comedy club because of the perceived link to the TV show and the judge held that Comic Enterprises' evidence was sufficient – "it 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".
Comic Enterprises also claimed that Fox was passing off. However, since there was no misrepresentation, a key factor in establishing passing off, this claim failed.
Comment
Comic Enterprises had the foresight to protect its brand as its business started to expand in 1999. This case is a clear example of the value of trade mark protection; although it may not be over yet since press reports indicate that Fox will appeal. This is unsurprising given that Fox could alternatively be faced with having to take the TV show off the air in the UK or having its merchandise, DVDs and other related products removed from shops.
A comedy club has successfully taken on 20th Century Fox in a trade mark infringement case concerning its use of "glee".
Background
Since 1994, Comic Enterprises Limited ("Comic Enterprises") has been operating comedy clubs and providing live music in various venues in UK cities under the name "The Glee Club". On 19 June 1999, Comic Enterprises protected its brand by filing and obtaining UK Registration No 2200698 for the mark THE GLEE CLUB (series of 2).
However, in December 2009, 20th Century Fox ("Fox") started broadcasting the now popular television series "glee" in the UK. Comic Enterprises complained that customers were confused that its comedy club was in some way connected to the TV show and brought an action against Fox for infringement under s10(2), 10(3) Trade Marks Act 1994 and passing off. (The claim was originally transferred in March 2012 from the Patents County Court (now renamed Intellectual Property Enterprise Court) to the High Court (click here for details on that judgment)).
Decision
Fox unsuccessfully counterclaimed that Comic Enterprises' trade mark was invalid for being descriptive. It was, however, successful in partially revoking the mark for non-use with regard to clothing in class 25 and for some of the entertainment services within class 41.
Comic Enterprises succeeded in its claim under s10(2) by demonstrating that there was a likelihood of confusion amongst customers. Witnesses gave evidence of tweets and comments on Facebook that showed confusion. Comic Enterprises also provided evidence that its marketing campaign had to be adjusted to refer to the fact that it was not connected to the TV show, for example using the slogan "We're Glee and we're not on TV".
Fox argued that the judge should exercise caution as the confusion was the "wrong way round". The judge dismissed this and held that it was not necessary in a claim for infringement of a registered trade mark to show that there was "right way round confusion". All that was required was a likelihood of confusion.
Comic Enterprises also succeeded in its claim under s10(3) that the use by Fox of "glee" was without due cause and was detrimental to the reputation or distinctive character of Comic Enterprises' trade mark. Fox argued that there was no evidence of a change in economic behaviour of Comic Enterprises' customers as required in the Intel case (C-252/07). However, Comic Enterprises had provided evidence that customers were being put off attending the comedy club because of the perceived link to the TV show and the judge held that Comic Enterprises' evidence was sufficient – "it 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".
Comic Enterprises also claimed that Fox was passing off. However, since there was no misrepresentation, a key factor in establishing passing off, this claim failed.
Comment
Comic Enterprises had the foresight to protect its brand as its business started to expand in 1999. This case is a clear example of the value of trade mark protection; although it may not be over yet since press reports indicate that Fox will appeal. This is unsurprising given that Fox could alternatively be faced with having to take the TV show off the air in the UK or having its merchandise, DVDs and other related products removed from shops.