201612.13
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‘Glee’ Fight Goes On To Supreme Court

We have previously reported on one of the more well-known trademark stories of the past year concerning a legal battle over the name ‘Glee’. Aspects of the case are now due to be heard by the Supreme Court.

Most people associate Glee with the American TV series centred around a high school singing team and the trials and tribulations that befall them. A chain of UK based comedy clubs has however held a trademark for a figurative logo with the words ‘The Glee Club’ with the colours red, black and white as an element of the mark since 1999, a decade before the TV series first aired.

Back in February, the Court of Appeal upheld a ruling of the High Court that Twentieth Century Fox (the makers of the TV show) had infringed the Glee Club trademark. The Court of Appeal felt that there existed a likelihood of confusion between the mark and the TV show and the greater reputation of the TV show did not matter as the trademark was deemed broad enough to cover Fox’s use of the word. This decision could have the effect of forcing the TV show to change its name if it is upheld by the Supreme Court.

Twentieth Century Fox sought to appeal the case to the Supreme Court on three grounds. The Supreme Court rejected two of those arguments but has allowed the broadcaster to proceed to appeal on a technicality of whether UK trademark law is compatible with EU law.

UK law allows for the registration of a bundle of similar trademarks in one application (known as a series registration). This is what happened with The Glee Club which actually includes two figurative logos with the first of those logos also claiming the colour combination referred to above. The broadcaster’s case is that this goes against EU law as it creates a new kind of trademark.

This argument has already been rejected by the Court of Appeal but will now be heard by the Supreme Court. As this case concerns the interpretation of EU law there are also possible Brexit implication. The Court of Appeal decided that it did not need to make a referral to the Court of Justice of the European Union to rule on the EU law. If the Supreme Court were to decide that such a referral was in fact necessary then this will delay matters and it would be possible that EU law would cease to have effect by the time any judgment was actually made.

If you have any questions on the above please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.