Glee vs The Glee Club and the concept of wrong way round confusion

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Court rules that Fox must change the name of its television program "Glee" as it infringes the intellectual property rights of "The Glee Club" a renowned UK based chain of comedy clubs.

Background

At first instance the High Court held that Fox (the proprietor of the American sitcom) infringed the rights of Comic Enterprises Limited (CEL) who are the proprietor of several UK marks consisting of stylised words "The Glee Club", by using the name "Glee" for its program. The Judge applied the theory of wrong way round confusion. This is contrary to traditional confusion found within section 10(2) of the Trade Marks Act 1994 (the Act). Instead, wrong way round confusion occurs when the relevant public believe that the earlier mark is related to the later sign, as opposed to the later sign with the earlier mark and as such confusion may arise. However the ambiguous matter is whether wrong way round confusion satisfies the test under section 10(2) of the Act and whether fame should be a relevant consideration. The Judge held that there was a sufficient likelihood of confusion as Fox's marketing and broadcast of "Glee" in the UK was so overwhelming that consumers were likely to believe that Fox owed the CEL's comedy clubs or that the two companies were connected.

Fox appealed this decision permission for which was subsequently (and unusually) granted by the trial Judge (permission at this point would normally be sought from the Court of Appeal).

Current position

In giving permission for Fox to appeal, the Judge maintained that this decision did not undermine his original judgment, the appeal was permitted on the grounds that this case concerned contentious points of law.

In the interim, the Judge held that it was appropriate to impose a publication order against Fox. This means that Fox is under a duty to draw its viewer's attention to the foregoing decision and subsequent developments. It was also suggested that the Judge may be minded to grant an injunction. This would prevent Fox from using the word "Glee" for its program in the UK with the exception that Fox may refer to "Glee" for referential purposes i.e. to state that the program was previously called "Glee". The injunction has however been stayed pending the outcome of the appeal.

In the meantime, we must wait for the decision of the appeal in which the Judge will have to scrutinize wrong way round confusion, the likelihood of confusion occurring and the applicable tests. In his considerations the Judge will also need to explain the reasons why he considers Glee's fame to be relevant in assessing the likelihood of confusion, albeit the wrong way round.

Case law discussing the validity of using fame as a relevant consideration is both limited and conflicting, as such the outcome of this case will be an interesting one and we will keep you updated.

What we can however say is that this case reiterates the importance of conducting thorough trade mark searches both domestically and internationally to check for potential conflicts. By conducting trade mark searches you will be able to identify potential conflicts and make a reasoned decision as to how to proceed with your brand.

For more information or advice on trade mark searches please contact the Blake Morgan Intellectual Property team.