So what can be ‘glee’ned from the series of rulings in the long-running trade mark and passing off dispute between Comic Enterprises and Twentieth Century Fox?
Last month the Court of Appeal handed down its latest decision in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation (Fox) holding that Comic Enterprises’ UK series registration of two device marks featuring the words ‘The Glee Club’ was valid and that s.41 of the Trade Marks Act 1994 (TMA), under which the registration was secured, was compatible with EU law.
The court declared that the fact that the TMA allowed for registration of a series of trade marks when there was no such corresponding provision in the relevant EU Directive did not mean that it purported to create a new type of trade mark; it merely created an efficient procedure for registering trade marks which were very similar. A series of trade marks is a bundle of individual trade marks, each of which must comply with the requirements set out in Articles 2 and 3 of the EU Directive, namely that a trade mark must be a sign which is capable of being graphically represented in a clear, precise, unequivocal and/or objective manner, and each of which is entitled to individual protection. A series registration is not, as Fox contested, different manifestations of the same trade mark.
This latest ruling dealt a further blow to Fox following previous rulings of both the Court of Appeal and the High Court, in which Comic Enterprises claimed victory. However, it is unlikely to be the end of the matter as Fox has announced that it will seek leave to appeal to the Supreme Court.
In 2011 Comic Enterprises, which runs four entertainment venues around the UK hosting stand-up comedy, live music and cabaret events and operating under the name ‘The Glee Club’, commenced proceedings against Fox, producer of the popular musical TV series ‘glee’. Comic Enterprises based its claim for trade mark infringement and passing off on its 2001 UK series registration of the figurative mark ‘The Glee Club’ in relation to ‘clothing’ and ‘entertainment services’ and its unregistered marks ‘Glee Club’, ‘Glee’ and ‘the Glee Club’ without the figurative element, respectively. Comic Enterprises relied on evidence that confusion had arisen on the part of the public between Comic Enterprises’ business and the TV series since ‘glee’ started airing in the UK in 2009. Fox counterclaimed for invalidity and partial revocation of Comic Enterprises’ mark, submitting that the mark was descriptive, as the phrase merely described a type of singing club, and that its registration in relation to ‘entertainment services’ should be narrowed to ‘live comedy services’.
High Court Judgment
At first instance the High Court dismissed Fox’s invalidity allegation, holding that Comic Enterprises’ mark was not descriptive as it was a composite of the words and a spotlight device and, in any case, the mark had acquired a distinctive character by the date of registration. Comic Enterprises’ registration was revoked, however, for non-use in respect of class 25 (clothing) and was limited to the following in respect of class 41 (entertainment services): “live comedy services, night club and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings”.
The High Court judge ruled that Fox had infringed Comic Enterprises’ trade mark registration as its use of the sign ‘glee’ in relation to the television programme and spin-off albums, concert tours and merchandise gave rise to a risk of confusion. Various remedies were ordered, including an injunction to prevent Fox using the word ‘glee’ as the name of the TV series (except to say that the show was formerly known as ‘glee’). Comic Enterprises’ claim for passing off was not successful.
Court of Appeal Judgment
In early 2016, the Court of Appeal upheld the High Court’s decision on infringement but heavily criticised the first instance judge for failing to give adequate consideration to a number of important issues, including the evidence of ‘wrong way round’ confusion, the similarity of the services, and the context of use.
The Court of Appeal held that evidence of ‘wrong way round’ confusion, where a consumer familiar with the accused sign was confused upon seeing the registered mark, rather than vice versa, was admissible in claims of trade mark infringement. It found that this was because the ultimate result is that the consumer thinks that the goods or services at issue come from the same undertaking, regardless of which way round the confusion occurs.
In relation to the similarity of the services, the Court of Appeal rejected Fox’s argument that there was a clear distinction between a recorded TV series on the one hand and live comedy and music shows on the other, stating that it was possible to imagine live music and comedy shows that were entirely complementary to the ‘glee’ TV series, particularly given that Fox had itself sanctioned two world concert tours for the show.
Fox also argued that the context of use of the sign was important, and that it was far-fetched to suggest that consumers would think that Comic Enterprises would be behind the ‘glee’ TV series. Although the Court of Appeal agreed this was unlikely, it maintained that it was more likely that potential consumers of Comic Enterprises would think that Fox was linked to the comedy and music venues.
These factors, in combination with the court’s finding that there was a reasonable degree of similarity between the registered mark and the sign, led the Court of Appeal to conclude infringement under s.10(2) TMA (where an identical or similar sign is used in relation to identical or similar goods or services and there is a likelihood of confusion on the part of the public). Furthermore, since Comic Enterprises had established a reputation under its mark and evidence had been adduced at trial which showed Comic Enterprises’ mark had suffered detriment due to being swamped by Fox’s use of the word ‘glee’, the court was entitled to find infringement under s.10(3) TMA (where there is an identical or similar sign, the earlier trade mark has a reputation and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark).
In a second attempt to knock out Comic Enterprises’ trade mark, Fox also introduced a new counterclaim during the appeal on infringement, namely that the mark was invalid because of the TMA’s incompatibility with EU law. This claim was reserved to be considered separately, at the most recent hearing, but also proved unsuccessful.
The appeal highlighted the willingness of the courts to find that companies in seemingly different industries (here comedy club operators and TV show producers) provide goods and services that are sufficiently similar for the purposes of trade mark infringement. The risk of services being found to be similar increases when companies start branching out from their original business, for example Fox’s spin-off live concerts and albums based on the original TV show.
Brand owners should also be mindful of the potential for brand clashes where their businesses become more international (as in this case), and where brands are used increasingly online (as in the recent Merck trade mark case – you can read more about this here).
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation  EWCA Civ 455
 Directive 2008/95/EC