Comic Enterprises Limited (CEL) operate live entertainment venues across the UK under the Trade Marks Glee and The Glee Club and have been in business since 1994. CEL also own registrations for a series of two trade marks which contain Glee, since 2001.
Twentieth Century Fox (Fox ) produce the American series Glee which was first seen in the UK in 2009 and which has resulted in concert tours and spin off merchandising being sold, including DVDs.
CEL issued proceedings against Fox claiming trade mark infringement and passing off. In 2014 the English High Court ruled that Fox had infringed CEL’s registered trade marks but dismissed the claiming for passing off. Both parties appealed against the findings.
In a recent Judgement the Court of Appeal rejected all appeals.
Of critical importance to the trial Judge’s findings of a likelihood of confusion was “post-dated evidence”, that is, evidence from consumers who made a link between Fox’s sign and CEL’s trade mark because of their prior exposure to the Glee TV show. Fox argued that this “wrong way round confusion” was irrelevant.
The Court of Appeal rejected this argument stating that the order in which a consumer notices Fox’s sign and CEL’s trade mark is not irrelevant, infringement simply is whether there is a risk that the average consumer might think that the two entities are connected.
The Court of Appeal, however, held that there was no passing off, drawing a distinction between confusion and misrepresentation, the latter being a prerequisite for passing off and although CEL had established a reputation under its trade mark, the subsequent confusion was not sufficient to make out that there had been a misrepresentation by the other side.
Series of Marks
Fox also introduced a new claim which governs the registration of a series of marks, claiming that these type of marks are incompatible with the requirement at EU Directive level, that a trade mark must be a single sign which is capable of being represented graphically. If Fox successfully pursue this claim, it could potentially have a significant impact on proprietors of series trade marks as it could threaten the very legality of such marks.
The decision is a reminder that reputation alone may not be sufficient to protect a trade mark and that the best protection of all is to have a registered trade mark. It is also a powerful reminder to conduct clearance searches before adopting and using a trade mark.