Decision in GLEE Trade Mark Dispute

In 1999 Comic Enterprises, an operator of a small number of comedy clubs across the UK, obtained a trade mark registration for the mark THE GLEE CLUB with a logo in respect of services such as entertainment, comedy, live and recorded music and live shows.  The application was filed as a series of two marks, one in black and white and one in colour.  Twentieth Century Fox began showing its television series GLEE in 2009 which concerns the exploits of an entertainment group in a US high school.  Comic Enterprises began an action in 2011 against Twentieth Century Fox for infringement of its trade mark and Passing Off.

Comic Enterprises initially filed the proceedings before the Intellectual Property Enterprise Court (IPEC), however, the presiding judge transferred the matter to the High Court.  The original decision was handed down by the High Court in 2014 in favour of Comic Enterprises, however, Twentieth Century Fox appealed this decision to the Court of Appeal.  The Court of Appeal has maintained the decision made by the High Court and this case has provided clarification on a number of important principles in trade mark law, namely:

  • The IPEC can refer a case to the High Court if it considers the action of the claimant to be inconsistent with the principles of litigation before the IPEC.  Whilst the IPEC was established to allow SMEs cheaper access to the justice system, the Claimant was treating the case as one before the High Court which, therefore, justified its transfer.
  • A successful claim of infringement can be brought on ‘Wrong way round confusion’.  This confusion is where the consumer is aware of the infringing sign and, as a result, believes that the trade mark proprietor is connected to the infringing party rather than the other way round.  Due to this confusion, Comic Enterprises was able to produce evidence showing that customers had decided not to use its services because they believed there was a connection with Twentieth Century Fox’s GLEE.
  • The standard required for confusion under trade mark infringement differs from that required for misrepresentation under Passing Off.

This decision has wide ranging implications for Twentieth Century Fox as remedies such as damages, an account of profits, injunctions against further use, delivery up of infringing products and costs may be awarded against it.  Twentieth Century Fox has stated that it intends to exhaust the appeal process, so it appears that this matter is far from finished.

The Appeal Court is yet to make a decision on the claim by Twentieth Century Fox that registering a series of marks in a single application is contrary to EU law.  Agreement by the Appeal Court with this claim would likely to cause a significant change in UK trade mark law.

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