Gleeful Decision: Comic v Twentieth Century Fox
In a victory for a true underdog, the High Court has ruled that the claimant’s figurative trade mark for “the Glee Club” was infringed by the defendant’s use of “glee” for a television series and subsequent promotion/merchandising. The defendant’s counterclaim for invalidity failed.
The claimant, Comic Enterprises Limited (Comic) is an SME that runs a number of live entertainment venues throughout the UK (the first club opening in Birmingham in 1994), primarily for stand up comedy, but also other forms of entertainment, including live music. The defendant is the well known media company, Twentieth Century Fox Film Corporation (Fox), responsible for the television series “Glee”, produced in America, and broadcast on British television since 2009. The songs from “Glee”, were performed on tour and album compilations were sold in the UK, as well as merchandise bearing the word “Glee”.
The registered trade mark in question was a series of two marks, both device marks which include the words “The Glee Club”. The words are presented in a representation of a cone of light from a spotlight. The two marks are identical save that the first in the series claims the colours red, black and white, whereas the second is represented in black and white with no claim to colour. The trade mark was filed in 1999 for goods in class 25 and services in class 41, including entertainment services, comedy services, and nightclub and cabaret entertainment.
Comic claimed trade mark infringement, as well as passing off. Fox counterclaimed for partial invalidity and partial revocation of the trade mark.
Revocation and validity
Roger Wyand QC, sitting as a deputy judge, partially revoked the trade mark for non-use in respect of class 25 goods, and narrowed the specification of class 41 to what he considered was a “fair” specification in light of the use, and that “entertainment services” was too broad. In respect of validity, Fox argued that the trade mark was descriptive and put forward much evidence and many witnesses to attest to this fact. The deputy judge was persuaded by Comic’s arguments however, finding that the Trade Marks Act 1994 did not set out a minimum level for distinctiveness, and that the device component of the trade mark was not devoid of any distinctive character.
Following an assessment of the similarity between the trade mark and the sign as used by Fox, the deputy judge found that there was a similarity between the two marks (although it was not “of the highest order”).
On considering the ‘average consumer’, the deputy judge applied the normal test of the average consumer being reasonably well-informed, observant and circumspect. The average consumer was also assessed to be someone who watched Fox’s television series and who was aware of Comic’s business. The deputy judge accepted the evidence that an ‘average consumer’, who was familiar with Comic’s business, would when seeing a trailer for the “Glee” television show assume the two were connected. The deputy judge was also persuaded by the evidence that showed it was possible for there to be ‘wrong way round’ confusion that is, that members of the public who had known of Fox’s “Glee” television show, prior to Comic’s business may still, upon seeing or hearing about Comic’s “The Glee Club”, (taking into account the similarity of the marks and the services) believe there was a connection with the television show.
The deputy judge held that the trade mark had a reputation as it had acquired distinctiveness at the date of the application, and that it had been established in evidence that the similarities between the trade mark and the sign were such that one would necessarily call to mind the other. Comic argued that Fox’s use of the sign was detrimental to the distinctive character or repute of the trade mark, and the deputy judge found that the evidence established that it was in fact the case, and that Fox’s use caused dilution and tarnishing of the trade mark.
The deputy judge therefore concluded that Fox had infringed the trade mark under section 10(2)(b) and 10(3). However he did not find in Comic’s favour with respect of the claim in passing off as the use of the sign by Fox must result in a misrepresentation.
Although Comic had suffered damage as a result of its venues being confused with Fox’s television show, and its potential customers were put off, there had been no misrepresentation by Fox, and so there could be no successful claim in passing off.