No joy for ‘Glee’ as UK court sides with comedy club again
The producer of US TV show “Glee” has lost an appeal against an earlier ruling in which it was found liable for trademark infringement following a battle against a London-based comedy club.
In a decision handed down this morning, February 8, the English Court of Appeal sided with London-based Glee Club in its dispute with 20th Century Fox.
The court confirmed that Glee Club, owned by umbrella organisation Comic Enterprises, had trademarks for its name infringed by Fox’s hit TV show “Glee”.
The case centred on two trademarks showing the London company’s logo with the words ‘the Glee Club’ on it. The trademarks had been in use for more than a decade before the US show first aired in 2009.
Today’s ruling upholds a decision handed down by the English High Court in 2014.
Comic Enterprises said that Fox’s TV show, which focuses on a singing club at a fictional US high school, infringed its trademarks through episodes, spin-off songs, DVDs and merchandise marketed in the UK.
It also accused Fox of passing off, but that claim was rejected by both courts.
Sharon Daboul, trademark attorney at IP law firm EIP, said the decision was a reminder that registered trademarks offer powerful protection regardless of a company’s size.
“Even though Comic Enterprises and Fox do not appear to be in the same area of business, the trademark registration was deemed broad enough to cover Fox’s use of the mark on the ‘Glee’ television show.
"The investment required for a trademark registration can be relatively small in comparison with its potential value, as Comedy Enterprises no doubt has seen,” she said.
Daboul added: “While Glee aired its sixth and final season between January and May 2015, this ruling will still affect television re-runs, future performances of the live show, DVD and CD sales, digital downloads, as well as merchandise, and will still be a significant blow for Fox.
“Rebranding is a costly and inconvenient exercise, and in earlier proceedings Fox’s lawyers had argued that a rebrand could lead to ‘catastrophic consequences’ for the company."
Glee Club was represented by law firm Wragge Lawrence Graham & Co, while Fox was represented by Simmons & Simmons.
