Comic Enterprises Ltd (CEL), owners of a UK trademark registration for The Glee Club, run a number of comedy clubs across the UK. Its venues are used for stand-up comedy performances and live music. The registration dates back to 1999 and covers 'entertainment services; production and/or presentation of television programmes'. Meanwhile, Twentieth Century Fox (TCF) first broadcast the highly popular “Glee” TV series in the UK, in 2009, which followed members of a music society at a fictional American High School. It has been incredibly successful, leading to a UK tour and related merchandise sales.

Dispute over trademark infringement

In what was seen as a 'David vs Goliath' dispute, earlier this year CEL successfully sued the much larger and better funded TCF for trademark infringement following a dispute that had lasted approximately three years. There was found to be a likelihood of confusion between the two marks and CEL were suffering damage as a result of this confusion amongst consumers. The Court was persuaded by evidence supplied by CEL that showed it was possible for there to be “reverse” or “wrong way around” confusion.  Members of the public who had known of the “Glee” TV show first, may, upon seeing or hearing about “The Glee Club”, believe there is some form of connection with the television show.

The remedies

The purpose of the most recent hearing, held in July, was to discuss what remedies would arise from the Court’s findings of trademark infringement. Despite a strong counter argument from TCF, the Court granted an injunction preventing further use of the name ‘Glee’ in relation to the TV programme in the UK, and an order to re-label physical and digital copies of the programme that are within TCF’s control or possession.

The Court also ordered interim damages to CEL of £100,000.  The full amount of damages will be assessed at a later hearing.  The judge said that this payment was an “extremely conservative figure” for the total amount CEL could win if they prevail. TCF had argued that an enforced name change would be costly and disproportionate to the damage suffered but the Deputy Judge (Mr Roger Wyand QC) disagreed, stating that it was “necessary” to protect CEL’s intellectual property. 

He ruled that requiring TCF to cease naming its series “Glee” would not be unfair, stating:  "I find it hard to believe that the cost of the re-titling and publicising of the new name would be so prohibitive compared to the value of the series.  I was told many times during the course of the trial how this series is a ‘blockbuster.’"

Mr Wyand QC did, however, indicate that the new title of the programme should allow a reference to the fact that it had previously been known as “Glee”.  The purpose of this reference was to help educate the public and the new name could be selected to have a reference to the programme, such as the name of the High School featured in the show.

Twentieth Century Fox’s position

Mr Wyand QC granted permission to appeal on the basis that the case is “unusual and involves difficult points of law”. There was a sting in the tail for CEL in that the Court ordered that the injunction against the continued use of the name “Glee” would not come into effect pending an appeal to the Court of Appeal, meaning that the programme can continue to be called “Glee” for the time being.

TCF have confirmed its intention to appeal.  Since the next series, Series 6, is intended to be the last, the effect may be that de facto, TCF can continue to use the name for the final series unless CEL can get the appeal expedited.However, a publication order was granted because “it is important that the viewers of the show should have their attention drawn to the judgment”, and publication of the decision would help to limit further damage to CEL’s trademark registration.

Importance of registered trademarks

This decision highlights the importance and power of registered trademark rights.  On the face of it, CEL and TCF were not in the same area of business, but the trademark registration was held to be sufficiently broad to cover the latter’s activities in relation to the Glee programme.This was supported by evidence of consumer confusion.

Regardless of a company’s size, trademarks can offer powerful protection to applicants seeking to protect their own legitimate interests, and the investment required for a trademark registration can be relatively small in relation to the potential value a trademark registration can have. 

The decision is also a reminder that businesses need to conduct trademark clearance searches in all relevant markets prior to investing in, and launching new brands.  Whilst international searches and trademark registrations can be costly, it is far more expensive and inconvenient to have to rebrand after a product has been launched.  Having to defend a trademark infringement action is avoidable with the correct due diligence.  Rebranding in only one geographic region is unattractive.  The prevention is always better than the cure.

The next episode in this saga, the appeal, is due to air in the UK next year.  Stay tuned!

Sharon Daboul is a registered UK and European trademark attorney at EIP in London. She can be contacted at +44 (0)20 7440 9510 or sdaboul@eip.com