Growing businesses and the “connected” world remain a recipe for disputes over branding. A dispute between Fox TV and a stand-up comedy venue chain (CEL) highlights this. Both used the brand GLEE, but in what many might regard as quite different businesses. A combination of online marketing and brand extension activities led to sufficient blurring in the minds of the relevant public (essentially teens and young adults) to make co-existence impossible. Fox cannot carry on using the name for its show.
The UK Court of Appeal ruled earlier this week (Comic Enterprises Ltd v Twentieth Century Fox) that Fox cannot continue to use the GLEE brand for its popular TV show.
The case hinges on CEL’s UK trade mark registration:
These devices were registered in 2001 for “Live comedy services; night club and cabaret entertainment… productions and presentation of live shows and displays…” etc.
In 2009 Fox launched its musical comedy TV series called "glee" in the US and the UK. The show proved very popular, won awards and resulted in spin-off concert tours, song releases and merchandise. By the time of the show’s launch, CEL had two large venues in Birmingham and Cardiff, promotional “Gleemails” and a twitter account, @theGleeClub. Clubs in other locations soon followed, but CEL found that its GLEE brand was being compromised by consumer confusion with the TV show. They took things up with Fox in court, and won.
Now, on appeal, that decision has been confirmed. Not only has CEL succeeded on standard trade mark infringement (similar mark, similar services and a likelihood of confusion) but also on the more difficult reputation case (similar mark, a reputation and unfair advantage being taken or detriment shown). Fox’s argument that the confusion was the “wrong way round”, because consumer witnesses had seen the TV show first and then become confused when they encountered the comedy clubs, got nowhere. You just need:
“a risk that the average consumer might think that the goods or services come from the same undertaking or economically linked undertakings, and that is all…”
A third claim by CEL, that Fox had misrepresented that their show was linked to CEL so as to amount to passing off, failed. But that does not affect the overall victory for CEL.
There’ve been reports that both sides want to take things further so there may be another episode to enjoy.