06 April, 2016

A Gleeful End - TV Show 'Glee' Infringes Comedy Venue's Trademark

Whether you are old or young you cannot have escaped the phenomenon that was the TV show Glee, which reached its peak popularity some time just before the turn of the first decade in 2000. The show was a teen drama, encompassing musical elements on top of the usual teen drama fare (very much in the spirit of glee clubs in the days of yore). Even with its upbeat style, the show, or rather its name, has not existed in pure glee, but has faced a prolonged challenge in the UK over its name. With that said, would the show have its last song as "Glee", or were they able to defend their moniker?

The recent decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation dealt with a series of comedy clubs in the UK called The Glee Club, existing in Cardiff and Birmingham, among other cities. The owners of the clubs, Comic Enterprises, registered the logos of the clubs as UK trademarks in 2001. The marks incorporated the club's name in a stylized fashion, including a spotlight in the background of the name with each constituent part of it being roughly of equal size. The TV show "Glee" (focussing on the antics of a alee club at a fictional US high school) ran between the years of 2009 and 2015, garnering huge success both in and off the TV format, prompting Comic Enterprises to take them to court for trademark infringement and passing off after the clubs' owner noticed the similarities between the two names.

What the Court of Appeal had to address was whether Fox infringed the registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994, and whether they were guilty of passing off.

Under both sections 10(2) and 10(3), infringement is assessed on the basis of six factors: "(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion". The first four factors were not disputed, as the show was indeed shown in the relevant territory (the UK); the mark was used in the course of trade (a commercial TV show); there was no consent over its use by Comic Enterprises; and the mark was identical with or similar to the registered mark (the Glee Club/Glee).

No room for song and dance after Lord Justice Kitchin's judgment
The final two factors look at whether the use of the mark was for similar or identical goods or services (i.e. is a club the same as a TV show in terms of use), and whether, as a result, there would be a likelihood of confusion between the goods and services. This is a matter of assessing, among other factors, "...their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary". Equally, the two marks have to be compared through the perspective of the average consumer. Without similarity there cannot be infringement, so this is very important.

A big point of contention in the assessment of similarity was the trial judge's 'wrong way round' determination through evidence, or in other words, that the registered mark evoked a connection with the TV show, rather than the other way around (the more typical test for similarity). After discussing all submitted evidence anew, Lord Justice Kitchin determined that the evidence did indeed create a likelihood of confusion, however acknowledging some of it having little probative value. This is an interesting point, as the case clearly accepts 'wrong way round' evidence, and as such this could be used in other cases to prove a likelihood of confusion.

Finally, Lord Justice Kitchin turned to the matter of infringement, due to substantial errors made by the trial judge in their initial judgment. He ultimately found that there was indeed infringement under section 10. The two marks were deemed to be similar, even with the fact that the word "glee" was a common word.  Additionally, the goods and services offered by the two parties were sufficiently similar, although the similarity of a TV show and a club were challenged by the defendant. Lord Justice Kitchin specifically mentioned the context of the marks' use, and even though he accepted that the connection between the two was loose on the face of it, there still was a possible connection, especially with a world tour planned for the TV show incorporating a live element to the mark's use. He ultimately found a likelihood of confusion between the two marks. A potential changing of economic behavior by consumers based on this confusion would also cause detriment to the claimant, especially in the light of a need to change their marketing to further distinguish themselves from the TV show.

He also agreed with the trial judge and dismissed the passing off claim made by the claimant, as a likelihood of confusion is to be distinguished from misrepresentation, which is crucial for a passing off claim. As the defendant's use of the name was not to pretend the TV show was associated with the comedy clubs (although the mark was confusingly similar) and thus was not a misrepresentation.

The case is an interesting one, and shows that 'wrong way round' confusion is a legitimate argument, even though one could consider it unorthodox under the letter of the law. Nevertheless, this writer agreed with Lord Justice Kitchin, and wonders whether the case will see a further appeal, especially because of an outstanding issue on the compatibility of section 41 under EU law (specifically Directive 2008/95/EC). This remains to be seen, but it seems that the show will have to be rebranded in the UK, even after its end some time ago.

Source: IPKat

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