Comic Enterprise Limited (Comic Enterprise) commenced proceedings against Twentieth Century Fox Film Corporation (Fox) for trade mark infringement and passing off. Fox counterclaimed against Comic Enterprise for partial invalidity and partial revocation of the trade mark.
Comic Enterprise runs a number of entertainment venues mainly for stand-up comedy and live music. Comic Enterprise trading as The Glee Club owned the trade mark “The Glee Club” since 1999.
Fox is responsible for a television series called glee which follows a group of American high school misfits that form a singing club. The television series was launched in the UK in 2009.
The Glee Club trade mark registration was for, amongst other things: entertainment services; show production services; production and/or presentation of radio and television programmes, live shows, displays, films and sound and video recordings.
Comic Enterprise brought a claim of trade mark infringement against Fox for their use of glee stating that customers were confused into thinking that there was an association between the television series and The Glee Club.
Following the television series launch, Comic Enterprise found that potential customers were being put off from attending The Glee Club venues as they were confused, thinking there was an association with the television show.
The court found in favour of Comic Enterprise stating that their trade mark was infringed because of the likelihood of confusion and that the distinctive character of the registered trade mark had been diluted and tarnished.
The outcome was slightly mixed. The Glee Club trade mark was partially revoked to only the services that the trade mark has been used for and Comic Enterprise failed in their claim for passing off. However, it was found that Fox had infringed The Glee Club trade mark.
This is an interesting case because some of the evidence used to show that the public was confused between The Glee Club and glee was social media, namely Twitter.
It also highlights the importance of checking that your company or business name or product does not infringe a registered trade mark as this could lead to an expensive legal battle.
In addition, if you choose to register a trade mark, make sure it is only for the goods and services which you intend to use. If not, then this could lead to a claim of trade mark invalidity or revocation.