In the case of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation (2014), the High Court handed down judgment against Twentieth Century Fox for infringement of a UK trade mark but rejected a claim of passing off.

The facts

Comic Enterprises ran a number of live entertainment venues in the UK, collectively known as The Glee Club. In 1988 they registered the domain www.glee.co.uk, the trade mark of the words “the glee club” on a stage with a spotlight shining on them in red, black and white and also black and white, was filed in June 1999 and registered in April 2001.

Twentieth Century Fox, as you may be aware, produces the US television series “glee”. The pilot programme was broadcast in the UK in December 2009. The programme is about a show choir who are members of a fictional US High School’s Glee Club. Songs performed in the programmes and album compilations featuring these performances have been sold in the UK; there have been two world tours, which encompass the UK, DVDs of the tours, merchandise linked to the programme and the tours, and bearing the word “glee”. The word “glee” is all lower case and is usually in bright colours on a bright background.

Comic Enterprises asserted that these activities, when carried out in the UK, infringed their trade mark and were being passed off by Twentieth Century Fox’s programme and merchandise as being associated with theirs. Twentieth Century Fox denied infringement and passing off and counterclaimed for partial invalidity and partial revocation of the trade mark.

The decision

After the hearing, the Deputy Judge found for Comic Enterprises in the matter of infringement of the trade mark and granted an injunction, publicity order, option between damages and an account of profits, interim payment and delivery up of infringing copies of the show. It was held, however, that allegations of passing off were not found, as the average person was more likely to associate Fox’s business with Comic Enterprise as opposed to the other way round — the Judge termed this as “wrong way round confusion”, as evidence of people believing that Comic Enterprise venues were connected with Fox’s TV show.

The Judge stayed the injunction pending the hearing of Twentieth Century Fox’s appeal, and said that they would be allowed to use a term such as “formerly known as Glee” in its new branding. He also indicated that the interim payment of £100,000 was an extremely conservative estimate of the damages or profits that might be awarded to Fox, as he considered that the damage done to their trade mark was likely to be significant.

This is a real battle of David versus Goliath and goes to show that even extremely large corporations still need to carry out comprehensive trade mark clearance searches prior to expansion into international territories.

If you would like to know more about our Freedom to Operate searches or our Trade Mark Watching Service please contact me on 023 8048 2114 or email me.