US Television giant Twentieth Century Fox ("Fox") suffered a blow this week after losing an appeal to reverse the 2014 finding that Fox's TV series infringed the trade mark in The Glee Comedy Club owned by Comic Enterprises Ltd ("CEL"). For a full background to this dispute, please see our previous article here. In summary, CEL operated live entertainment venues primarily for stand-up comedy. It owned a UK a trade mark registration for a series of two device marks in respect of these services as follows:
In 2009, Fox launched in the UK the TV series "Glee". The appeal decision, given mainly by Kitchin LJ, follows the findings by the High Court that the activities of Fox amounted to trade mark infringement under s.10(2) and s.10(3) of the UK Trade Marks Act 1994 (the "1994 Act").
Fox contended on appeal that the judge had erred in finding infringement under both sections of the 1994 Act. CEL argued that there was no reason to interfere with the judge's findings on infringement and cross-appealed that Fox was also liable for passing off.
Similar marks and public confusion (even if such confusion is the 'wrong way round'): s.10(2)(b)
The crux of trade mark infringement under section s.10(2)(b) came down to whether: (i) Fox had used Glee in relation to similar or identical goods and services to those registered under The Glee Club mark; and (ii) because of that similarity, there existed a likelihood of confusion on the part of the public. Fox's infringement was upheld: there was deemed to be a reasonable degree of similarity between Glee and the The Glee Club and both were used for similar entertainment services in that comedy shows can be, and indeed are often, televised and TV series can be merchandised and taken on live tours. It was deemed not unreasonable to suppose that a consumer might think that the producers of Glee were also in some way responsible for, or connected with, CEL's comedy and music venue. In addition, it was not considered to be the case that a consumer would watch Glee and would appreciate that the word 'glee' had an independent descriptive origin in that it denoted a singing club. Taking these factors into account, a likelihood of confusion existed. The case confirmed that 'wrong way round' confusion was admissible; there was no need for a consumer to be familiar with THE GLEE CLUB before later coming across Glee in the TV series (i.e. the order in which a consumer comes across The Glee Club and Glee is irrelevant).
Similar marks and damage to reputation: s.10(3)
Fox's infringement under s.10(3) of the 1994 Act was also upheld. On the evidence, The Glee Club had sufficient reputation to qualify for protection in 2009. CEL successfully showed that consumers made a connection between Fox's Glee sign and CEL's mark The Glee Club. Again, it did not matter that Fox's Glee sign would often be encountered first. CEL evidenced that the scale and use of Fox's Glee sign had a detrimental impact on CEL's business, specifically, its ability to identify and promote its venues as its own, leading to a change in economic behaviour of consumers.
Passing off
Despite succeeding on both grounds of trade mark infringement, CEL's claim for passing off failed. The appeal focused on the distinction between confusion and misrepresentation: whilst the use of Glee in the TV series was liable to cause confusion, there was no evidence to suggest that Fox was guilty of actionable misrepresentation.
Remedies
The remedies judgment following the High Court decision granted CEL all the remedies it sought including an injunction, publicity order, option between damages and account of profits, interim payment and delivery up of infringing materials. Whilst the injunction was stayed pending conclusion of the appeal, the judge stated that Fox would be entitled to include a term such as "formerly known as Glee" in new branding. The interim payment of £100,000 was also indicated to be a conservative estimate of any potential damages payable as the judge considered that it should be possible to assess the contribution that the "Glee" name made to the success of the show and that an account of those profits should be allowed.
Even though Fox has aired its final season of Glee, it now finds itself in a position where it might be forced to re-title all of its DVDs and CDs and re-brand all of its merchandise in the UK – something which it claimed in the 2014 remedies hearing would be an "insurmountable problem". Despite Fox's arguments, the judge found it "hard to believe that the cost of re-titling and publicising of the new name would be so prohibitive compared to the value of the series." The exact terms of any order, however, remain to be seen.
This is unlikely to be the end of the road for this dispute as Fox has indicated that it would seek to pursue claims that the The Glee Club trade mark is not compatible with EU law. At the trial, Fox argued that The Glee Club was invalid because under s41 of the 1994 Act the trade mark must be a 'sign' in the sense of being a single sign and capable of graphical representation. Fox reserved this point at the trial, advancing its submission contingently should it fail on its other grounds. It now remains to be seen whether Fox will indeed bring invalidity proceedings on these grounds.
Comment
Of interest to brand owners in this case is the lack of any need for 'right way round' confusion. This is of particular importance in 'David and Goliath' cases where consumers may only encounter the original trade mark after coming into contact with the later sign. This case makes clear that 'right' or 'wrong' way round may be nothing more than the order in which the consumer happens to see the mark or sign. If confusion results in consumers believing that goods or services come from the same undertaking, then both can be equally as damaging to a brand owners mark.