On February 8, 2016, the Twentieth Century Fox Film Corporation lost its appeal against the Comic Enterprise Ltd (CEL) after the Court of Appeal ruled that it had infringed the CEL’s registered trademark “the glee club”, using the world glee as the name of its TV drama series1.
The Claimant, Comic Enterprise Ltd (CEL), is an entertainment company with venues in different cities in UK, such as Birmingham, Cardiff, Oxford and Nottingham. It offers stand-up comedy acts, live, recorded music and nightclub and cabaret entertainment. It is also an owner of a logo registered as a trade mark which includes the words ‘the Glee Club‘ lighted by a spotlight. The defendant, indeed, is a famous entertainment American company which has produced a high school series called Glee, focused on the glee club, its member and their relationships. In addition, since 2009 the sign “Glee” has been used for a live show based on the television series, DVDs and different goods, such as clothing.
The dispute started in September 2011 when CEL brought a claim in the High Court accusing Fox of trade mark infringement and passing off. In the judgment of 18 July 2014, the mark was declared infringed by the defendant under s.10 (2) and s.10 (3) of the Trade Mark Act 1994 and CEL could obtain a final injunction to prevent Fox from using the word glee as the name of its series. By contrast, the passing off allegation was rejected.
As a result, on the one hand, Fox appealed the ruling and rejected all arguments of the deputy judge which brought him to find the trade mark infringement under s.10(2)(b) and s.10(3) of the 1994 Act, while CEL brought a cross appeal against the dismissal of the claim for passing off.
The legal issues considered by the Court of Appeal were as follows.
First, the Court of Appeal considered if the defendant had infringed the trade mark under s.10(2)(b) of the 1994 Act. In the High Court, the deputy judge stated that the mark and the sign are similar but the similarity “is not of the highest order” from an average consumer prospective. In particular, the word “the” and “club” are not present in the defendant’s sign and “conceptually the Mark suggests a club whereas the sign does not”. This argument, then, brought the judge to evaluate if that similarity creates a likelihood of confusion to an average consumer. In the light of evidence, specified as “wrong way round confusion evidence”, the judge declared that confusion between consumers is possible in so far as they rely on the existence of a link between the earlier mark and the later sign.
By contrast, the defendant claimed that the sign was not similar to the trade mark because it did not contain all parts of the claimant’s logo mark and the common element ‘Glee’ is descriptive. In addition, the defendant criticised the decision as too succinct, inadequate and without enough evidence, but also for the application of wrong way round confusion evidence, which they argued was irrelevant.
However, the Court of Appeal dismissed Fox’s criticisms, restating that the defendant had infringed the mark under section 10(2) of the 1994 Act because there is a similarity between the mark and the sign, pointing out that the most important word in the claimant’s mark was the word “Glee”. To be more precise, Fox’s sign, sometimes composed of two words as “Glee club”, when it is used in the TV show or in relation to services, especially live music tour, which are really similar to the mark, can create a likelihood of confusion to the average consumer, infringing section 10(2)(b) Trade Mark Act 1994.
Secondly, the Court of Appeal considered if the defendant has infringed the trade mark under section 10(3) of the 1994 Act. This required an as assessment of whether Fox has caused detriment to the distinctive character of the claimant’s registered trademarks.
The Court of Appeal held there was a possibility that the use of the defendant’s sign would bring the claimant’s mark to the mind of the average consumer. So customers will be disappointed when they discover that the TV series and the Glee Club are not linked. Therefore, this contributes to a change to consumers’ economic behaviour causing a detrimental to the claimant’s business. The Court of Appeal added that even if Fox has adopted the sign in a good faith, its use cannot be without due cause because of the damage caused to the claimant’s mark.
In relation to the passing off claim, the Court distinguished between confusion in trade mark infringement and misrepresentation in passing off. The judge, after considering all circumstances, held that consumer confusion, based on wrong way round evidence, is not enough to be a misrepresentation for the purposes of passing off.
Assistant Editor, QMJIP