Today, the High Court held that Comic Enterprises' trade mark 'The Glee Club' was infringed by 20th Century Fox's TV series.
Comic Enterprises established its first live entertainment venue in Birmingham in 1994 and now operates venues in Cardiff, Oxford and Nottingham. The venues are primarily used for stand-up comedy and live music.
In 1999 it registered UK trade mark 2200698 in relation to a number of services, including entertainment services, comedy services, the provision of live and recorded music and the production and presentation of live shows. The trade mark is a series of two marks, as shown below.
The two marks are identical except that the first in the series is stated to be claimed in the colours red, black and white whereas the second is represented in black and white with no claim to colour.
Fox's television series glee follows an American high school singing club at the fictional William McKinley High School in the town of Lima, Ohio. Examples of its use of the sign "glee" are as follows:
Comic Enterprises found that potential customers were assuming its business was connected to the TV series. It brought a claim for trade mark infringement under s. 10(2) and (3) of the Trade Mark Act 1994 and passing off; Fox counterclaimed that the trade mark was invalid and that the specification was too broad.
The following issues fell to be determined by the court:
- Was the trade mark invalid for being descriptive?
- How is a series mark to be construed for the purposes of assessing infringement?
- Was 'wrong way round' confusion sufficient to establish a likelihood of confusion?
- Was there dilution or tarnishment of the trade mark?
Was the trade mark partially invalid for being descriptive?
Fox argued that the mark was partially invalid under ss. 3(1)(c) and 47(1) of the Trade Marks Act 1994 because the words "glee club" were descriptive of a singing club.
In particular, it relied on the following evidence:
- There were examples of the use of the description "Glee Club" for a singing club, the majority of which were confined to traditional public schools such as Winchester College, Harrow School and Charterhouse; and
- Dictionaries define a glee club as a society for singing part-songs.
Comic Enterprises countered Fox's submissions in three ways, all of which the court was in agreement with:
- s. 3(1)(c) of the Trade Marks Act 1994 says "The following shall not be registered - (c) Trade marks which consist exclusively of signs ... which may serve ... to designate the ... intended purpose ... or other characteristics of goods or services." The trade mark was a composite mark including the text "The Glee Club" and spotlight. The latter feature could not be said to be descriptive of the services in question, nor was it devoid of distinctive character.
- The term 'glee club' is obscure and not known by most people in the United Kingdom and, as such, does not fall within the scope of s. 3(1)(c). Mr Wyand QC in summarising the evidence held that it did not show that the term was known or understood by more that a very small section of the public. Distinguishing Doublemint (C-191/01) he reasoned that "Although Doublemint makes it clear that the objection is not avoided if there is more than one meaning but one of those meanings is descriptive, it does not follow that a term which would have no meaning to the vast majority of people is unregistrable merely because it is descriptive to a tiny majority of people and could become descriptive to a wider public." He concluded "[t]here are many words that have been in common parlance in the past but which have no meaning to the public now. There is no public interest in preserving those words on the basis that they may be used again in the future and be descriptive."
- In any event, the trade mark had acquired distinctiveness. Here, Mr Wyand QC held that the scale of Comic Enterprise's use was sufficient for the trade mark to have acquired a distinctive character by the date of the application for registration and even more so by the date of 20th Century Fox's challenge to the validity of the registration.
How is a series mark to be construed for the purposes of assessing infringement?
Fox alleged that, as the trade mark was a series mark, to assess infringement the court had to identify a single mark which represented both of the series marks.
s. 41(2) of the Trade Mark Act 1994 provides that "[a] series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matter of a non-distinctive character not substantially affecting the identity of the trade mark".
Fox submitted that, as the monochrome trade mark covers all colours, and the second mark in the series claimed, red, black and white, the colour claim applied to both versions of the mark for the purposes of assessing its identity.
The court rejected this, explaining that it did not see the colour combination as being a part of the distinctiveness of the registered trade mark. The distinctive characteristics of the two marks were the words and device, which were identical in both marks.
In any event, Mr Wyand QC noted that "[i]f the registration was not for a series mark but for a single mark, being the monochrome version, that would not fall foul of the requirement for a single point of comparison. I do not see why adding a further mark to the monochrome version, where that further mark is totally subsumed within the monochrome version, changes the position."
Was 'wrong way round' confusion sufficient to establish a likelihood of confusion?
Typically, trade mark infringement turns on showing that there is a likelihood that the defendant's sign is or will be confused for the claimant's trade mark.
Here, some of the evidence before the court was the other way round: members of the public were confusing the claimant's trade mark for the defendant's sign. In essence, members of the public who knew of the series, on seeing and hearing of Comic Enterprises' business, believed that Comic Enterprise was connected with the TV show.
Mr Wyand QC referred to this as 'wrong way round' confusion. The question was whether this was a "likelihood of confusion" for the purposes of s. 10(2) of the Trade Mark Act 1994?
Fox argued that the relevant date to assess likelihood of confusion was the date of the launch of the television series, December 2009. It cautioned against relying on evidence of people's reactions after that date when the series had been extremely successful. It reasoned that these reactions could not shed any light on whether an average consumer would connect the mark with the sign at the relevant date.
Mr Wyand QC disagreed. He held that the issue was whether there was a likelihood of confusion, irrespective of the direction in which it flowed. Further, he held that evidence from when the sign was being used on a large scale was probative. He noted that if Fox has been using the sign on a large scale for a couple of years and there had been no evidence of confusion, then it would be relying on that lack of confusion in its defence.
Was there dilution or blurring of the trade mark?
Having concluded that the mark had a reputation, that the mark and sign were similar, and that the use of the sign would call to the mind of the average consumer the mark, it fell to be considered whether the use of the sign was detrimental to the distinctive character or repute of the trade mark under s. 10(3) of the Trade Marks Act 1994.
Fox relied on Intel (Case-252/07), arguing that there was no evidence of a change in economic behaviour of Comic Enterprises' customers. It also sought to rely on Wolf Head (Case C-383/12), a decision of the Court of Justice of the European Union which was handed down after the trial.
The latter held that:
"34. According to the Court's case-law, proof that the use of the later mark is or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corporation, paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment)
37. The concept of 'change of economic behaviour of the average consumer' lays down an objective condition. That change cannot be deduced solely from the 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 of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No. 207/2009, in as much as that similarity does not cause any confusion in their minds."
Comic Enterprises had adduced evidence from customers showing that they were discouraged from attending Comic Enterprise's clubs in the mistaken belief that they were linked to the television series. It had also adduced evidence from its marketing company, which explained that from a marketing perspective the glee television series presented a real threat to the trade mark which had to be addressed in its marketing programme.
Mr Wyand QC concluded that this was sufficient objective evidence to show that the trade mark was suffering detriment though swamping. He noted that "[i]t 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."
Wragge & Co's Brands team leader Cerryg Jones, who led on the case, said: "The Glee Club never wanted to take on Fox but they had little option because the TV show was harming their brand and business. Fox refused to recognise this and our client was forced to take action. The High Court heard evidence for several days and came to the clear conclusion that the TV show was confusing customers, and diluting and tarnishing the Glee Club brand."