A sigh of relief

The claimant, Comic Enterprises, is a small to medium-sized enterprise that runs live entertainment venues in the UK. Its first venue opened in Birmingham in 1994, followed by Cardiff (2004) and Oxford and Nottingham (both 2010). The venues focus primarily on stand-up comedy, but three of the establishments also provide live music.

Comic Enterprises registered UK trademark no. 2200698, ‘The Glee Club’ (series of 2), covering goods and services in classes 25 and 41. The mark was filed on June 19, 1999 and registered on April 20, 2001 (see Figures 1
and 2).

The claimant’s mark was used in these forms on the fascia on the outside of its venues and on promotional material. Inside the clubs, the backdrop for the stages was the word ‘Glee’.

Twentieth Century Fox, the defendant, produced a television series, “Glee”, that ran from May 2009 to May 2015. The programme was primarily about a fictional singing club in a US high school. It was very successful in the UK, particularly from 2009 to 2012. Songs performed in the programmes (and compilation albums comprising them) sold millions of copies. Fox also licensed a range of merchandise (including clothing) which was sold in the UK.

Comic Enterprises brought a claim for trademark infringement under sections 10(2) and 10(3) of the UK Trade Marks Act 1994 (TMA) and for passing off. Fox counter-claimed for invalidity and revocation for non-use.

On February 7, 2014, the English High Court found that the claimant had not made genuine use of its mark in relation to any goods, but it had made genuine use of the mark in relation to a number of services, including ‘live comedy services’ and ‘provision of live and recorded music’. The court found that Fox’s use infringed in relation to these services under both sections 10(2) and 10(3). The claim for passing off was not successful, however. Both parties appealed.

Appeal decision

‘Wrong way round’ confusion

The majority of the evidence of confusion which the judge relied on at first instance was from members of the public who were aware of Fox’s ‘Glee’ mark first, and considered that the claimant’s mark was in some way connected to it, rather than the other way around.

Fox argued that any such evidence was irrelevant, as such confusion could only arise after the relevant date (ie, May 2009, when Fox’s “Glee” programme first aired in the UK). Following a decision in February, the English Court of Appeal disagreed. It considered that the only question was whether there was confusion—irrespective of which way it flowed—and that evidence that came to light after the date of first use of the sign could (and often does) assist the court in its assessment. As the claimant had adduced genuine evidence of confusion, and this confusion was detrimental to its business, the court found that there had been infringement under section 10(2).

Fame of marks

Fox argued that as infringement of section 10(3) is dependent on the reputation of the earlier mark, the link must be made by consumers who are already familiar with the earlier mark. Again, however, the court found that once it had been established that the earlier mark had a reputation, the only question to answer was whether a link between the marks existed.

The court concluded that the evidence of ‘wrong way round’ confusion demonstrated that consumers would make the requisite link. The court also found that Fox’s extensive use caused detriment to the claimant’s brand and business by “swamping” the market, making it difficult for the claimant to expand any further.

"In Lord Justice Kitchin’s opinion, series marks are therefore 'entirely compatible with the requirements of the directive as spelled out by the Court of Justice in Sieckmann, Libertel, Heidelberger and IP Translator'."

Passing off

The appeals court agreed with the first instance decision that Fox’s use of ‘Glee’ did not amount to a misrepresentation that its business was the same or connected to the business behind the Glee Club venues, nor that the goodwill associated with the Birmingham and Cardiff venues was materially affected by the launch of Fox’s “Glee” programme in 2009.

Series marks

At first instance, Fox argued that the court should adopt a ‘lowest common denominator’ type approach when assessing series marks for the purposes of assessment, ie, that because series marks had to be essentially ‘identical’ to constitute a series, it was the mark with the narrower scope of protection in the series that should be considered. The High Court disagreed, holding that series marks in effect constituted a ‘bundle’ of separate marks, and Fox did not pursue this point on appeal.

However, Fox did attempt to argue, for the first time before the Court of Appeal, that series marks were inherently invalid as section 41 of the TMA was incompatible with articles 2 and 3 of the EU trademark directive. Fox’s primary contention was that a series registration is essentially the registration of a single trademark which consists of a number of signs. It is therefore necessary to identify a single point of comparison between all of the marks in the series, and because this is an uncertain exercise, it is contrary to the established principles of EU law that a trademark consists of a sign which is capable of being graphically represented in a clear, precise, unequivocal and objective manner.

In a second ruling in May, the court disagreed. It viewed section 41 of the TMA as concerned with the procedure for registering and the form of registration of particular trademarks which are very similar. It confirmed that these are matters which were not harmonised by the directive and they remain within the competence of member states. In Lord Justice Kitchin’s opinion, series marks are therefore “entirely compatible with the requirements of the directive as spelled out by the Court of Justice in Sieckmann, Libertel, Heidelberger and IP Translator”.

The appeals court therefore concluded that series marks are compatible with EU law and a series registration is not liable to be declared invalid by the mere fact that it is a series. Fox announced on May 25, 2016 that it would be seeking leave to appeal to the UK Supreme Court.

The Court of Appeal’s conclusions in relation to the assessment of ‘wrong way round’ confusion for the purposes of sections 10(2) and 10(3) are useful and instructive. The court’s conclusions in relation to passing off also highlight the importance of obtaining registered trademark protection. However, it is the court’s conclusions on series marks—that they in effect constitute a bundle of separate marks and that the UK Intellectual Property Office’s practice of registering them is entirely compatible with EU law—that will bring the most relief to brand owners.

Daniel Sullivan is a senior associate at Elkington and Fife. He specialises in all areas of trademark law and practice with a particular focus on contentious matters. He can be contacted at: daniel.sullivan@elkfife.com

Figure 1: First mark in the series—claimed colours red, black and white