Feb 10, 2016

20th Century Fox Not So 'Glee' After Losing Trade Mark Infringement Appeal

Comic Enterprises Ltd v Twentieth Century Fox Corporation

The producer of hit US TV show Glee has lost an appeal against an earlier ruling in which it was found liable for trademark infringement following a legal battle against a London-based comedy club called the "Glee Club".

High Court

The Glee Club initially claimed victory in 2014 after a High Court Judge ruled that its trade mark had been infringed. However, the victory came with a caveat as the Judge confirmed that the order for Fox to rename Glee would only come into effect when the Court of Appeal confirmed his judgement.

Court of Appeal

Appeals by both sides followed but both were dismissed on 8 February 2016. Lord Justice Kitchin said, "there exists a likelihood of confusion" and confirmed that Glee Club, owned by an umbrella organisation Comic Enterprises, had trade marks for its name which had been infringed by Fox's popular TV show.

Central Points

The case centred on two trade marks showing the Glee Club's logo with the words 'the Glee Club' on it. The trade marks, registered in 1999, had been in use for more than a decade before the US show first aired in 2009.

Comic Enterprises claimed that Glee, which follows a singing club based at a fictional high school, infringed its trade marks through episodes, spin-off songs, DVD's and merchandise marketed in the UK. It also accused Fox of passing off, but this claim was struck out by both courts, ruling that in law there had been no misrepresentation.

Comment

The decision is an important reminder that registered trade marks offer powerful protection regardless of a company's size. Even though Comic Enterprises and Fox do not appear to be in the same area of business, the trade mark registration was deemed broad enough to cover Fox's use of the mark on Glee. An American lawyer commenting on the case said that, "The investment required for a trademark registration can be relatively small in comparison with its potential value, as Comedy Enterprises no doubt has seen."

Fox's lawyers have confirmed that the company will continue to appeal the "catastrophic consequences" involved with re-branding Glee, with repeats, DVD sales, stage show performances and downloads all set to be affected.

A Fox spokesperson said: "We note the court of appeal's decision and welcome its consideration of the outstanding issues. We remain committed to proving the merits of our case and to delivering Glee to all of its fans in the UK."

Future Developments

The case is ongoing and the decision of the Court of Appeal may be appealed to the European Court. That decision is expected to be made in the next few months.

If you need any advice and assistance on registering trade marks or enforcing existing rights do not hesitate to contact McDaniel & Co. on 0191 2814000 or at legal@mcdanielslaw.com

Posted by: in: Case Law, News, Passing Off, Trade Marks

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