“glee” and trade mark infringementPrint publication
The well known US TV series, “glee” has been on the wrong end of a High Court trade mark infringement action . The claim was brought by Comic Enterprises Ltd, which operated live entertainment venues at different locations in the UK and has done since 1994. The venues are primarily used for stand-up comedy and live music. It has a UK registered trade mark for “the glee club” in respect of a number of services, including entertainment services, comedy services, the provision of live and recorded music and the production and presentation of live shows. The mark was a series of two figurative marks containing the words “the glee club” in a spotlight. The first in the series was in colour, the second in black and white; apart from that there were no differences between them.
When Comic Enterprises claimed against Twentieth Century Fox for trade mark infringement and passing off, Fox counterclaimed that the trade mark was invalid and its specification too broad.
Was the mark descriptive?
The Trade Marks Act 1994 prohibits registration of a mark that is “devoid of any distinctive character”. Marks which are descriptive therefore will generally not be capable of registration. Fox argued that the words “glee club” were descriptive of a singing club. It adduced evidence that the term “glee club” was used in a number of traditional public schools to describe a singing club and a dictionary definition of a glee club as a society for singing songs.
The High Court rejected this argument. First, the contested mark featured a spotlight which was not descriptive, nor was it devoid of distinctive character. Secondly, the term “glee club” was obscure and not known to most people in the UK. A term that had no meaning to the majority of the public was not necessarily incapable of registration simply because it was descriptive to a “tiny majority” of the public. Finally, the trade mark had acquired distinctiveness through use.
The construction of a series mark when assessing infringement
As noted, the mark was a series mark. Fox argued that for the court to assess infringement it had to identify a single mark which represented both of the series marks and that the colour claim applied to both versions of the mark for the purposes of assessing its identity. The court rejected this submission, finding that the colours were not part of the distinctive feature of the mark – rather, it was the words together with the device which make the mark distinctive. The court also rejected the submission that the colour version of the mark should be the point of comparison given that the monochrome mark was expressed to apply to all colours – there was no reason to add the colour version of the mark as a single point of comparison.
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 called this “wrong way round” confusion but the fact that the confusion was the “wrong way round” did not mean that the claimant could not succeed in its claims. It did not matter which way the confusion flowed.
Dilution of the trade mark
Having found that the mark had a reputation and that there was a likelihood of confusion between the mark and Fox’s “glee” sign, the court went on to consider whether the use of the Fox sign was detrimental to the distinctive character of the mark. Comic Enterprises adduced evidence from customers showing that they were being deterred from attending its venues because of mistaken belief of an association with the TV series. The court accepted that there was evidence to show that the mark was suffering a detriment as a result of the TV show. In the words of the judge: “I have found that there is a likelihood of confusion and 20th Century Fox’s use causes dilution and tarnishing … the damage suffered by Comic Enterprises is caused by its venues being confused with the TV show and its potential customers being put off.” Accordingly, the action for trade mark infringement succeeded; the passing off action failed as there had been no “misrepresentation” – a necessary ingredient for passing off.
Where this leaves matters, and in particular future series of the glee TV series in the UK will be determined at another hearing. Fox has indicated an intention to appeal. This case is 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.
 Comic Enterprises Ltd v Twentieth Century Fox Film Corp