No Glee as comedy club left laughing

Background

The Claimant, Comic Enterprises Limited, operates a number of live entertainment venues in the UK, primarily for stand-up comedy. Comic Enterprises owned a registered trade mark that is a series of two marks, for a number of specified goods in Class 25 (clothing) and Class 41 (entertainment services). The mark is a composite mark including the words ‘the glee club’ and an image of a spotlight shining on the words (the “Mark”).

The Defendant is the well-known media company, Twentieth Century Fox (“Fox”). Fox is the company behind the popular television programme, “glee”, which is a story about an all singing, and all dancing American high school club. Several series of Glee have now been made and all have been broadcast in the UK generating large audiences. Following its success, Fox produced a live Glee Tour and other associated merchandise using the “glee” branding.

The Claimant brought an action alleging that Fox’s activities infringed the Mark on the grounds of trade mark infringement under s 10(2)(b) and 10(3) Trade Marks Act 1994 and passing off. Fox denied the allegations and counterclaimed for partial revocation and partial invalidity of the mark.

Analysis of the Decision

The court held that the mark was valid, albeit with a narrowed specification, and that Fox’s activities infringed the Mark on both grounds. The action for passing off failed. Two interesting issues were raised in the judgement:

“Wrong way round” confusion

Following a comparison of the Mark with the Defendant’s sign, the judge held that the Mark and the sign were similar, and that the respective businesses were also similar.

On the issue of confusion, the Claimant presented evidence of instances where members of the public knew of the Glee TV programme, and on hearing of or seeing the Claimant’s venues, believed that such venues were connected with the TV Show. This was described as the “wrong way round” confusion. By contrast the “right way round” confusion would be providing evidence that the average consumer thinks that the TV show is linked to the Claimant’s entertainment venues.

In this case, a number of employees of the Claimant provided witness statements that they had heard members of the public at/ outside the venues, confusing said venues with the TV show. Despite the Claimant only being able to produce evidence of actual confusion by one member of the public, the court found that there was a likelihood of confusion. Importantly, the judge held that any confusion will suffice; it does not need to be the “right way round” to constitute infringement.

Dilution

Having found that the signs were similar, that the Mark has a reputation in the UK, and that the use of the sign would “call the Mark to the mind of the average consumer”, the judge went on to consider if the use by Fox of the Glee sign would be detrimental to the distinctive character or the repute of the registered trade mark, i.e. dilution.

The test set by the CJEU in the Intelmark case is that there must be evidence of a change in the economic behaviour of the Claimant’s customers (or a likelihood of such change in the future). In the recent case of Environmental Manufacturing (see our previous Law Now here) the court held that the change of economic behaviour is an objective condition: the change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient to establish the existence of detriment to the distinctive character.

The Claimant presented evidence that potential customers were being “put off attending the Claimant’s shows” on the basis that they had wrongly assumed the shows were connected to Glee. The judge noted that this “reaction shows that potential customers are changing their economic behaviour”. This was supported by evidence that a marketing company instructed by the Claimant had advised that the TV programme was an actual threat to the registered Mark. The judge stated “it is not necessary for a Claimant under section 10(3) to produce evidence quantifying a change in economic behaviour. All that is needed is objective evidence that there is or will be such a change”. The court held that there was detriment to the distinctive character and repute of the Mark and as such the Defendant also infringed on this basis.

Comment

The concept of “wrong way round” infringement is fairly new in the assessment of the likelihood of confusion in trade mark cases. This argument is most likely to apply where the goods or services of the Defendant may be said to ‘swamp’ the activities of the trade mark owner (a similar situation arose in the case of Medion). Whilst the application of this concept is therefore likely to be limited, the court’s willingness to recognise the concept suggests that it may be a useful tool for a Claimant in appropriate circumstances. In particular, it may be possible to avoid the need to adduce survey evidence, and to “side-step” the challenges and pitfalls associated with such evidence.

In relation to the passing off claim, the judge held that only evidence of “right way round” confusion can be relied on. The lack of “right way round” confusion in this case meant that the passing off action was unsuccessful. In essence, the judge found that there was confusion for the purposes of trade mark infringement but there was no confusion for the purposes of the passing off action. It is arguably difficult to reconcile the logic of these findings and this may well be raised if an appeal is made.

On the matter of dilution, this decision emphasises that there is a distinction to be made between evidence that consumers are aware of a new sign’s similarity to the earlier sign, and evidence that such awareness has impacted on those consumers’ decisions and actions (in this case, the decision to not go to the Claimant’s venues). Only the latter can be relied on to support an argument for dilution. In this case, the evidence that potential customers were “changing their economic behaviour” appears to rely on the evidence of just a few witnesses (employees of the Claimant), who noted that students at Fresher Fairs were rejecting the Claimant’s ticket offers.

The full text of the decision can be found here.