Logos and No-gos: No joy for Twentieth Century Fox in glee appeal

The Court of Appeal has upheld an earlier High Court ruling and found that the popular US television show “Glee” infringed a UK comedy club’s trade mark registration for “the glee CLUB” (the Mark).

The TV show's producer, 20th Century Fox, faces having to re-brand and account to the comedy club for the profits it has made using the “Glee” sign (the Sign). The amount payable remains to be determined, however the court has already ordered 20th Century Fox to make an interim payment of £100,000.

The decision is interesting as the comedy club successfully relied on evidence of confusion showing that the public knew of the TV show already and, on seeing the Mark, believed the comedy club was associated with the TV show (as opposed to the more common scenario where the public was aware of the Mark before seeing the infringing Sign). The decision reinforces the value of obtaining a registered trade mark as the court found that the comedy club’s evidence of “wrong way round” confusion was insufficient to establish a case in passing off, but adequate for trade mark infringement. The registered trade mark therefore enabled a small company to take on 20th Century Fox, a multinational company with annual revenue of almost $30bn, in circumstances where, had it not registered its mark, its claim would otherwise have failed.