25 May 2016Trademarks

Fox defeated again in trademark row over ‘Glee’

UK-based comedy venue The Glee Club has won its second trademark case before the UK Court of Appeal (Chancery Division) against US TV show “Glee”.

Lord Justice Kitchin along with Lord Justice Lloyd Jones and Lady Justice Arden agreed that series trademarks for ‘The Glee Club’ are valid and dismissed the appeal by Twentieth Century Fox, which makes the programme.

The hearing took place on April 8 but the decision was published today, May 25.

It held that the registration of trademarks as a series is not contrary to EU law and confirmed the validity of The Glee Club’s marks.

In the ruling, Kitchin outlined the points of the case including Fox’s argument that it is necessary to have a “single point of comparison” between all of the marks.

Fox had claimed that series marks should be invalid under EU law.

At the hearing, Nicholas Saunders, for the comptroller general of patents, designs and trade marks, maintained that series trademarks are a “bundle” of individual marks.

He found it necessary to find “a single point of comparison” between all of the marks in the case.

Kitchin said: “It seems to me that this applies as much to similar marks that are registered as a series as it does to similar marks that are registered separately, and I am not persuaded that the registration of trademarks as a series is likely to cause any material difficulty in this regard in the future.

“I therefore reject the submission that the registration of trademarks as a series is highly misleading.”

He added: “Finally, a trademark 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 trademark which has been registered on its own.

“For all of the reasons I have given, I have come to the conclusion that s.41 of the 1994 [UK Trade Marks Act] is compatible with the [EU trademark] directive. I would also reject the argument that the trademarks in issue in this case are liable to be declared invalid. I would dismiss this appeal.”

WIPR first reported the case in February 2014 when The Glee Club won a trademark lawsuit against Fox. The club, established in 1994, convinced the English High Court that the Fox-owned programme infringed its trademarks.

The case centred on two trademarks showing the 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 came to air.

The Glee Club claimed that the TV show, which focuses on a singing club at a fictional US high school, infringed its trademarks through its episodes, spin-off songs, DVDs and merchandise marketed in the UK.

First broadcast in the UK in 2009, “Glee” was initially aired on Channel 4 before being bought by Sky.

In a judgment issued in 2014, Judge Roger Wyand recognised there was a "likelihood of confusion" and the potential for customers to "believe there is a link" between the two.

The judgment ended a three year legal battle between the comedy club and the media company.

In his judgment Wyand said that The Glee Club’s venues had “distinctive character” and that the public may be discouraged from attending if they believed they were connected to the TV show.

In July the same year,  WIPR reported that Fox was ordered to make an interim payment of £100,000 ($170,000) to The Glee Club’s owners.

The case went to the English Court of Appeals Court after Fox appealed. In  February this year, the court  sided with The Glee Club, leaving this final issue of the validity of series marks to be decided.

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More on this story

8 February 2016   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.
21 July 2014   A judge from the UK High Court has ruled that the producers of US television show Glee may have to change its name after losing a trademark dispute with a London-based comedy club.
26 May 2016   Twentieth Century Fox will reportedly take a trademark dispute with a UK-based comedy venue to the UK Supreme Court, following the English Court of Appeal’s decision to side with the club yesterday.