Glee or Glum

The Battle of the Glee’s
The Court of Appeal have upheld a High Court ruling made in 2014 that Twentieth Century Fox’s TV series Glee infringes the trade mark, ‘The Glee Club’, a UK trade mark registered by Comic Enterprises Limited (Comic Enterprises).

Comic Enterprises runs comedy and cabaret venues around England under the name’The Glee Club’. Comic Enterprises had registered the words ‘The Glee Club’ as a trade mark in 1999. The trade mark covered a number of services including, live comedy service, nightclub and cabaret entertainment, live and recorded music etc.

In 2009 Twentieth Century Fox (Fox) started broadcasting the US hit TV Series, Glee, in the UK. Comic Enterprises issued proceedings against Fox in September 2011 claiming that Fox had infringed its UK Trade Mark and that the TV show was causing damage to its business, as customers were becoming confused with the two.

Comic Enterprises successfully argued in the High Court that Twentieth Century Fox’s show Glee, breached its UK trademark, The Glee Club name, but the Court had dismissed Comic Enterprises claim for passing off as misrepresentation had not been proven.

Fox appealed against the High Court’s decision that it had infringed Comic Enterprises UK trade mark ‘The Glee Club’. Comic Enterprises cross-appealed against the decision of the High Court on its claim of passing off. The Court of Appeal dismissed Fox and Comic Enterprises appeals. The decision by the Court of Appeal meant that if Fox were forced to change its name in the UK it would have to rebrand Glee in the UK involving replay of shows, DVD sales, stage show performances and downloads.

The case highlights the importance and power of a registered trade mark. A point which remains undetermined is whether the Court of Appeal decision is incompatible with EU law. Fox had indicated that that they will be issuing an application in the Supreme Court for the purposes of overturning the original High Court decision in 2014.

Only time will tell who will have the last laugh.

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