Glee for Club Owner in Trade Mark Dispute

Comic Enterprises Ltd, a company who operate live music and comedy venues, have recently won a trademark dispute against 20th Century Fox.

Fox produce a television show called ‘Glee’, a programme about a high school singing group and in 2009 started broadcasting this in the UK, supported by two world tours and lots of merchandising.

Comic argued that Fox’s use of Glee infringed their trade mark, which was a logo comprising the words ‘the glee CLUB’. Comic argued that their business had suffered damage because new customers were associating their trade mark with the television series and were put off attending the venues as a result.

The case is interesting because the decision focused on ‘right way round confusion’. Usually in a trade mark dispute the earliest trade mark is the more well-known trade mark and its business is harmed because people assume that the infringing trade mark is connected with the earlier mark holder. This was referred to as ‘right way round confusion’

In this case, however, the Fox mark was the more well-known mark and Comic was arguing that the general public were associating their mark with the new show (‘wrong way round confusion’) which was harming their business.

The judge in the case decided that, so long as there was confusion caused, it did not matter whether the confusion was the right way round or the wrong way round and, as a result, there was an infringement of Comics marks under the Trade Mark Act.

If you are thinking of registering a trade mark, or are concerned about trade mark infringement, contact one of our trade mark specialists on 01484 519999.