26 May 2016Trademarks

‘Glee’ TM dispute: lawyers weigh in as Fox seeks UK Supreme Court review

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.

The appeals court confirmed that series trademarks for ‘The Glee Club’ are valid as such marks are not contrary to EU law. The court previously confirmed that Fox’s TV show ‘Glee’ infringed the marks.

In a trademark battle with The Glee Club that has been rumbling on since 2014, it has been reported that Fox will take the case to the UK’s highest court.

According to reports, Fox said: "We note the Court of Appeal's decision and will seek the Supreme Court's consideration of the issues … We remain committed to proving the merits of our case and to delivering ‘Glee’ to all of its fans in the UK."

Cerryg Jones, partner at law firm Gowling WLG and who acted for Comic Enterprises, owner of the ‘The Glee Club’ trademarks, told WIPR: “The judgment demonstrates the importance of obtaining registered trademark protection for businesses and is great news for brand owners.

“Without this protection, the Glee comedy shows would have been powerless against the might of the Fox empire. Fox will now have to pay compensation based on the profits they have made from the TV series and related forms of commercial exploitation.”

Tom Carl, senior associate at law firm Taylor Wessing, said: "Subject to any successful appeal by Fox to the Supreme Court, or an out-of-court settlement between the parties, this means that Fox will now need to face the music of the various sanctions that were stayed pending the outcome of the appeal.

“Fox has been spared from having to fully disclose its accounting records for the series. The UK club will now also be able to pursue it for damages or an account of Fox's UK profits for the series (having been previously ordered to make a £100,000 interim payment).”

He continued: "Fox will be required to rename the ‘Glee’ TV series in the UK.”

Sharon Daboul, trademark attorney at law firm EIP, said: “This decision is a reminder that registered trademarks are effective regardless of a company’s size. A trademark registration provides an exclusive right to use the mark for the goods and services covered. Registering a trademark enables the owner to stop others from using the trademark or a similar trademark without its permission.

“All businesses need to consider the importance of properly clearing a brand before launch. It is far more expensive and inconvenient to rebrand after a product has been launched in the market. The prevention is always better than the cure,” she added.

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More on this story

25 May 2016   UK-based comedy venue The Glee Club has won its second trademark case before the UK Court of Appeal against US TV show “Glee”.
6 June 2016   A majority of WIPR readers have agreed with a recent ruling that registering trademarks as a series does not breach an EU law.