There has been a recent case whereby the High Court held that the 20th Century Fox’s hit television series, Glee, infringes Comic Enterprises’ registered trade mark for a logo which includes the words ‘the Glee club’. In the dictionary, a Glee club is a society for singing part-songs.
The background to the case is that Comic Enterprises established their first live entertainment venue in 1994. The venues are used for stand-up comedy and live music. In 1999, Comic Enterprises registered a UK trade mark including comedy services, the provision or live and recorded music and the production and presentation of live shows.
20th Century Fox produced the series, Glee, which follows an American high school singing club. When Glee became popular, Comic Enterprises found that potential customers were assuming their business was connected to the TV series. Comic Enterprises brought a claim for infringement and 20th Century Fox stated that the trade mark was invalid and that the specification was too broad.
The Court had to decide on several issues including whether the trade mark was valid, and whether there was a tarnishment of the trade mark. In relation to the validity of the trade mark, Comic Enterprises stated that their trade mark was a composite mark including the text ‘The Glee Club’ and spotlight (which couldn’t be descriptive).
Usually trade mark litigation turns on showing that there is a likelihood that the defendant’s sign is, or will be confused for the claimant’s trade mark. In this case, some of the evidence was the other way round. The public were confusing Comic Enterprises trade mark for Glee, so believed that Comic Enterprises were connected with the TV show.
Once the Court had decided that the trade mark had a reputation, it was then to decide whether the use of the sign was detrimental to the distinctive character or repute of the trade mark. 20th Century Fox argued that there was no evidence of a change in economic behaviour of Comic Enterprises.
Comic Enterprises provided evidence from customers showing that they were discouraged from attending Comic Enterprises clubs in the mistaken belief that Comic Enterprises was linked to the television series.
The final decision from the Court was that the 20th Century Fox show Glee was confusing customers and tarnishing the Glee Club brand. One thing to learn from this case, make sure that your business is protected with a registered trade mark to avoid potential future litigation.