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Glee trade mark infringement appeal - not the end of the series?

10 February 2016

Twentieth Century Fox has lost the first stage of its appeal against the finding it infringed Comic Enterprise Limited’s trade mark for a logo which includes the words 'The Glee Club' (registered for live comedy services and other services). Significantly 'wrong way round' confusion was accepted as capable of forming the basis of infringement; until now that was unclear. Here this meant, those who knew about the Glee TV series were incorrectly assuming the claimant’s comedy clubs must be a spin off or otherwise associated with the US show (not vice versa). Evidence that potential customers of the 'achingly cool' club were 'put off' by the Glee show’s image was found to have caused detriment to the reputation of the claimant’s mark. Further, where an earlier trade mark’s distinctiveness is 'swamped' by the later use of a similar sign by a third party on a huge scale (as here) that is harm which may entitle the mark owner to a remedy.

However the sting in the tail of this judgment may have the widest implications; Fox’s appeal was dismissed “subject to the outstanding issue concerning the compatibility of s.41 of the 1994 Act with EU law”. This is an argument Fox has held in reserve, should its other grounds of appeal fail. Fox contend the relevant mark is invalid because it was filed as a series of two variations pursuant to s. 41. Fox say a trade mark must be 'a sign' in the sense of being a single sign, capable of being 'graphically represented' as such. Fox also say UK series marks do not meet these criteria; therefore by allowing for them, UK legislation contravenes EU law. The UK Intellectual Property Office has defended series marks explaining them to be a “bundle of separate and individual trade marks” each of which must comply with the EU law requirements for validity (although they are applied for by a single application for one fee for the first two variations and allocated just one number when registered). It is probable that the UK IPO’s position will be confirmed, however if it is not, it will not be just the comedy club that is upset – as thousands of UK series mark owners may be far from gleeful.

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