11 February 2016

Delight for UK Glee Comedy Club

On 8 February 2016 the English Court of Appeal upheld the 2014 English High Court decision that 20th Century Fox (‘Fox’) is liable for trade mark infringement in the UK following an ongoing dispute between Fox and the London based Comedy Club owner Comic Enterprise Ltd (‘Comic Enterprise’) over the use of GLEE.

Comic Enterprise is the owner of a UK trade mark registration incorporating the term THE GLEE CLUB covering Class 41 services which includes ‘live comedy, entertainment, etc. registered in 2001. By the end of 2009 Comic Enterprise had made extensive use of its trade mark or variations thereof at venues in Birmingham and Cardiff and commenced use at venues in Oxford and Nottingham in connection with its business and the services contained within its registration.

In late 2009 Fox launched the well-known musical comedy television series called ‘Glee’ in the UK and US. At the time proceedings were launched Glee was in its fourth season. The series has now concluded.

Comic Enterprise commenced legal proceedings against Fox in 2011 alleging that Fox’s activities amounted to an infringement of its registered trade mark and passing-off. Comic Enterprise maintained that Fox’s TV show, which focuses on a singing club at a fictional US high school, infringed its trade mark through its activities in the UK through episodes, spin-off songs, DVDs and merchandise sold in the UK under the Glee name.

The English High Court agreed with Comic Enterprise and confirmed that the UK trade mark registration for THE GLEE CLUB had been infringed by Fox’s activities under the Glee name in the UK. Following an appeal to the English Court of Appeal, Lady Justice Arden, Lord Justice Kitchen and Lord Justice Lloyd Jones reaffirmed the decision of the English High Court. The claim for passing-off was rejected by both courts on the basis that the damage suffered by Comic Enterprise was not as a consequence of any misrepresentation by Fox.

This case is a reminder of the importance and value of trade mark protection through registration for any company. The cost of obtaining trade mark protection by registering your trade mark is miniscule when you consider the potential value. This is also another reminder why it is important that before use and registration of a trade mark it is advisable to check if it is already in use or registered by others, so that you do not launch or adopt a brand which may infringe.

Even though Fox aired the final Glee season last year, this ruling will have a detrimental impact on its future use of Glee in the UK. Television re-runs, DVD and CD sales, downloads, personal appearances and merchandising connected with Glee will be significantly impacted.

It can be a very costly exercise if you have to rebrand or recall products or defend an infringement action as Fox has found to its detriment. This can also be damaging to your reputation and most importantly the reputation of your brand which is something Fox will now have to deal with, as well as likely large monetary damages to be awarded to The Comedy Club!

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