Comic Enterprises ("Comic") is the owner of four live entertainment venues in the UK , opened in 1994, 2001, and two in 2010, which trade under the name "the Glee Club" and "Glee". The Court of Appeal has now given its ruling in the ongoing dispute between Twentieth Century Fox ("Fox") and UK comedy club owner Comic, agreeing with the High Court that Fox’s use of the title "glee" for its musical television series infringed Comic’s UK trade mark.
Two particularly interesting issues were raised by the Court of Appeal’s decision: (1) the use of "wrong way round" confusion to prove trade mark infringement, and (2) the level of similarity necessary for infringement.
The use of "wrong way round" confusion
For "wrong way round" confusion to occur, people seeing the trade mark which was originally registered (i.e. in this case, Comic’s trade mark for comedy clubs) would believe it to be connected in some way with the subsequent trade mark (i.e. Fox’s trade mark for musical television series).
Fox argued that Comic did not provide sufficient evidence that at the relevant date (of December 2009), the average consumer would have been confused between Fox’s television show and Comic’s trade marks. The trial judge had held there was "wrong way round confusion" occurring after this date which Fox submitted was not relevant under trade mark law.
On reviewing the evidence before it, the Court confirmed that the relevant question was whether there is a likelihood of confusion in light of the defendant’s actual and threatened activities. This confusion could be "right way round" or "wrong way round" – in any event, the nature of the confusion was likely to depend on "nothing more meaningful than the order in which the consumer happened to come across the mark and the sign". The court was entitled to take into account future actions when carrying out this analysis. After assessing the issues of similarity of services, similarity of the trade mark and the television show’s logo, the potential for confusion, and the context of use, the Court confirmed that there had been infringement of Comic’s trade mark.
The level of similarity
The Court also discussed the initial judgment regarding whether there had been infringement based on Fox’s show being "similar" to Comic’s trade mark which had then caused the trade mark detriment to its distinctive character and to its repute. The Court specified that the applicable degree of similarity is such that the average consumer believes they are connected – it is not necessary that there is sufficient similarity to create a likelihood of confusion. This connection by the average consumer is assessed globally and in the circumstances of the case.
This case shows the power of registering a trade mark, and the importance of checking potential implications of particular names in different jurisdictions when choosing a brand or product name, especially if your company has global ambitions. Where a trade mark includes a word in graphic format, it is critical to bear in mind that the scope of protection could extend to prominent words of that logo, even if the later work is used in a different format.
Both parties have the appetite to pursue the case further, and Fox has indicated that it will be raising separately the question of whether Comic’s trade mark is invalid for being a series mark, citing the potential incompatibility with EU law of the section of the Trade Mark Act 1994 which allows series marks to be registered. The relevant EU directive requires that a trade mark must be a single sign, capable of being "graphically represented". If this provision were to be found incompatible, it would have far-reaching ramifications for all holders of series marks, including Comic.