GLEE and wrong way round confusion

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We reported previously on a successful claim brought by Comic Enterprises Ltd against Twentieth Century Fox. The claimant operates live entertainment venues called “glee clubs” and has a registered trade mark for “THE GLEE CLUB”. Twentieth Century Fox are behind the GLEE television series which was very popular on both sides of the Atlantic a couple of years ago.

In finding for the claimant, the High Court judge made an interesting point about “wrong way round confusion”. Usually in trade mark infringement and passing off cases, the claimant will seek to show that there is a likelihood that the defendant’s sign is being confused with the claimant’s mark. In this case, the reverse was the position: members of the public were being confused that the claimant was associated with the Glee TV show. The judge said the fact that the confusion was the “wrong way round” did not mean that the claimant could not succeed in its claim. It did not matter which way the confusion flowed.

Fox appealed to the Court of Appeal.

The Court of Appeal agreed with Fox’s submissions that the judge had made mistakes in his judgment. The Court of Appeal therefore considered for itself whether there was a likelihood of confusion and held that, taking all relevant considerations into account, there was such a likelihood of confusion.

The Court agreed with the judge on wrong way round confusion. It rejected the argument that evidence of wrong way round confusion was inadmissible, and then went on to find that it was inevitable that many consumers would encounter the TV series before the claimant’s mark and would make a connection between the two. There was evidence that the establishment of such a connection on the part of consumers was prompting a change in their economic behaviour with the consequence that the claimant’s mark was suffering a significant detriment from the defendant’s use of the GLEE sign.

Accordingly, the appeal was dismissed.

After the High Court judgment we described this case as “a real David and Goliath case, and demonstrates that even powerful corporations can be held hostage to third party trade mark rights if they have not checked the position as to existing trade mark rights in the countries in which they wish to exploit the brand”. That analysis remains as true as ever in light of the Court of Appeal judgment.