The UK Court of Appeal upheld the High Court’s decision, ruling that US television show Glee infringes on the trade mark of a local comedy club, The Glee Club.

Comic Enterprises Ltd is a small company that owns a number of comedy clubs which they call The Glee Club. Comic Enterprises registered “The Glee Club” as a trade mark in 2001.

What was the US television show doing back then? Nothing, it didn’t exist yet. 20th Century Fox introduced and started airing ‘Glee’ on networks in 2009, eight years after The Glee Club’s trade mark registration.

When the television show began airing, Comic Enterprises became concerned that Glee was damaging their image and business, fearing that their customers were associating the television show with the comedy club.

The owner of The Glee Club, Mark Tughan, claimed that the television show did not attract the same type of audience as his customer base, and those who believed the two were connected were put off from attending the clubs. He argued that the similarity of the names and branding in the same field of entertainment services led to his business losing custom, and impeded their ability to establish a brand on the cutting edge of live comedy.

So Comic Enterprises took 20th Century Fox to court, claiming trade mark infringement.

Who would have thought a local small business up taking on a world renown film studio would emerge victorious? We look at what happened and the Court’s findings against 20th Century Fox.

The Court of Appeal Decision

In 2014, the High Court held that 20th Century Fox had indeed infringed The Glee Club’s trade mark with its show ‘Glee’.

The Court of Appeal upheld this decision and considered that the activities associated with each party were similar enough to make consumers think they were connected. The Court was of the opinion that it could be possible for the average consumer to associate that The Glee Club’s live comedy and music show with a television show.

Specifically, Lord Justice Kitchin of the Court of Appeal pointed out that the likelihood of confusion meant that 20th Century Fox had infringed the trade mark .

‘Catastrophic Consequences’

For 20th Century Fox, the decision requires a rebranding of the Glee franchise including DVD series, repeats on television, stage performances and merchandise.

Although the UK Court of Appeal has affirmed the High Court decision, the matter may still be referred to the European Court.

In Australia

The UK Court of Appeal’s reasoning is similar to what we could expect in Australia. Trade mark words can be infringed by the use of identical names or similar. This Glee Club case highlights that infringement can occur even where the marks are not used in relation to identical goods or services. Similar or associated services can cause confusion and constitute infringement.

Another lesson for Australian businesses to keep in mind is that the ability to protect a business name and branding comes with registered trade marks. Even a big business like 20th Century Fox couldn’t stand up against the small local Glee Club without a registered trade mark.

Questions about registering your trade mark? Let us know on 1300 544 755. 

Dhanu Eliezer
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