No Joy for Fox

Comic Enterprises run a number of UK comedy venues called the “Glee Club” and/or the “Glee Comedy Club”. Twentieth Century Fox are the well-known film and television production company who produce the hit TV series named “glee” which was aired in the UK. Comic Enterprises registered their “Glee Club” device mark in the UK in June 1999 in classes 25 and 41:

The Glee Club

Comic Enterprises issued proceedings in 2011 for trademark infringement and passing off in relation to this mark. Comic Enterprises successfully sued Twentieth Century Fox in 2014 in the High Court in respect of its trade mark infringement claim but failed in its passing off claim.

Twentieth Century Fox then appealed the High Court Decision to the Court of Appeal. Comic Enterprises cross-appealed in relation to its passing off claim. In February 2016 the Court of Appeal rejected both Twentieth Century Fox’s appeal on infringement and Comic Enterprises’s appeal on passing off.

In doing so the Court of Appeal concluded that evidence of ‘wrong way round’ confusion was admissible, noting that the distinction between 'wrong' and 'right' way round evidence may be nothing more meaningful than the order in which a particular consumer happens to come across the mark and the sign.

In rejecting Comic Enterprises’s appeal on passing off, the Court of Appeal agreed with the High Court judge. In doing so, it noted that it is important to keep in mind the distinction between confusion and misrepresentation. Use of the sign in relation to Twentieth Century Fox's TV series was likely to cause confusion, but this did not mean that Fox was guilty of any actionable misrepresentation. Kitchin was influenced by his conclusions that the real problems concerning the use of the “glee” sign only came to light when Comic Enterprises launched new venues in Oxford and Nottingham after Twentieth Century Fox's TV show was already up and running.

There was an additional point to be dealt with in that Twentieth Century Fox had counterclaimed that Comic Enterprises’ mark was invalid. The basis for this claim was that it is a series mark and that the UK legal provisions (in the Trade Marks Act 1994) that permit series marks should be seen as incompatible with the EU Trade Marks Directive (2008/95/EC) because the Directive says a trade mark must be a 'sign' in the sense of being a single sign and capable of being graphically represented.

In an additional Court of Appeal decision in May 2016, it was held by the court that this argument was not correct, finding once again in favour of Comic Enterprises. Kitchin LJ concluded (in agreement with the UK IPO comptroller) that UK legal provisions do not attempt to create a new kind of trade mark; they are concerned with the procedure for registering and the form of registration of particular trade marks which are very similar. In Kitchin's opinion the register and the registration of similar trade marks as a series are “entirely compatible with the requirements of the Directive” and that “a trade mark which has been registered as part of a series of marks is as self-contained, easily accessible, and intelligible and will be perceived as unambiguously as a trade mark which has been registered on its own”.

However, these matters are not yet concluded. Twentieth Century Fox intends to take this case to the UK Supreme Court. We think that if Twentieth Century Fox are granted permission to appeal then it is likely that Comic Enterprises will also appeal on passing off.

Judgment Date: 07 FEBRUARY 2014