17 February 2016

Glee: trade mark infringement based on wrong way round confusion

The Court of Appeal has issued its much anticipated decision in Comic Enterprises v Twentieth Century Fox deciding that Fox's use of 'glee' as the name of its highly successful TV series surrounding the trials and tribulations of a high school singing club at the fictional William McKinley High School (together with the use of the name on a wide range of licensed merchandise, and in concert tours etc) amounts to trade mark infringement.  

The claim of trade mark infringement (and passing off, which did not succeed) was brought by Comic Enterprises (CEL), which operates four entertainment venues in the UK (essentially, these are stand-up comedy venues but they also put on music, nightclub and cabaret entertainment).  CEL owns a series of two device marks for the words 'the glee CLUB' written in a particular script and presented in a cone of light from a spotlight (see below).  The Court of Appeal decided that the use of ‘glee’ gave rise to a likelihood of confusion, and additionally caused detriment to the distinctive character and repute of CEL's marks.  

Of particular significance is the Court of Appeal's assessment of the legal and factual relevance of so-called 'wrong way round confusion'. This evidence played a determinative role in the Court’s decision, given that there was only one instance of actual confusion since the show had launched in 2009, and the Court had thought that, otherwise, the determination of a likelihood of confusion was finely balanced.  ‘Wrong way round confusion’ also played a significant part in the Court's decision that there was the necessary link in the assessment of detriment to distinctive character and repute.  Given the nascent nature of these arguments (for example, a Court in New Zealand has recently rejected a role for ‘wrong way round confusion’), it appears likely that the admissibility and relevance of such evidence will have to be determined by the Supreme Court, and potentially by a reference to the Court of Justice.   

CEL’s marks

Key points from the decision

Criticism of the Deputy Judge’s decision

  • The trial Judge’s decision had been criticised by a number of commentators for its paucity of reasoning on a number of issues, including ‘wrong way round confusion’, the assessment of similarity between the respective services, and the significance of the context of Fox’s use of glee.  The Court of Appeal shared these concerns, which meant that it had to consider these issues afresh.  We discussed the trial Judge’s decision in this blog post on IP Whiteboard

Likelihood of confusion

  • The relevant date for assessing infringement was when Fox first began showing glee in the UK, ie in 2009.  CEL's director and sole shareholder first encountered glee in 2010 but adopted a wait and see strategy, thinking that ‘it might fade away’.  At that point, CEL operated two venues (in Cardiff and Birmingham); later in 2010 it opened new venues in Oxford and Nottingham.  Both of these venues displayed the word ‘glee’ in a prominent way in their signage. 

  • The Court of Appeal agreed with the Judge that there was some similarity between the Mark and the signs.  The Judge had said it was not of the highest order; the Court of Appeal put it a little higher, finding that there was a reasonable degree of similarity.

  • The specification of the Mark had been cut down to its core services of live comedy entertainment, provision of music hall services, provision of live and recorded music, and presentation of sound recordings.  Having assessed the nature of the services, their purpose and method of use, and their complementary nature, the Court of Appeal concluded that the services were reasonably similar (albeit the Court did not assess Fox’s services in any detail).

  • The Court of Appeal accepted that the context of use was important, and saw force in Fox’s argument that the average consumer would not believe that a US drama series called glee was from the same source as a comedy music venue.  However, referring to the glee world tour, the Court concluded that a consumer might think that the producer of the TV show was in some way responsible for, or connected with, the comedy and music venue.  It also rejected the argument that consumers would appreciate that 'glee' had an independent distinctive origin as it denoted a singing club.  

  • The Court of Appeal decided that ‘wrong way round confusion’ is admissible as a matter of law.  Fox argued that such confusion, which depends upon an established reputation of the defendant, has no part to play in assessing trade mark infringement.  The relevant date for assessing any infringement was 2009.  It could not be right, Fox argued, that a sign which did not infringe when first launched could infringe later as its reputation had grown sufficiently to generate a risk of ‘wrong way round confusion’.  Similarly, a claimant should not be able to rely on its growing reputation to bring an action for infringement which would not have succeeded when the defendant launched.  

    The Court of Appeal disagreed with this analysis.  Kitchin LJ said that the question was simply whether, having regard to a notional and fair use of the mark in relation to all the goods and services for which it had been registered, and the actual use of the sign, there was a risk the average consumer might think that the goods or services came from the same, or economically linked undertakings.  The infringement analysis, said the Court, could involve an 'element of looking forward': is there a likelihood of confusion in light of the defendant’s actual and threatened activities? In considering this question, evidence of confusion after the date of the defendant's launch could assist the court.

  • The relevance of ‘wrong way round confusion’ in the likelihood of confusion assessment is not a straightforward argument, and it appears ripe for assessment by the Supreme Court (and a potential referral to the Court of Justice).

  • Fox’s main argument, however, was that this evidence was in any event factually irrelevant.  The Court of Appeal agreed that the trial Judge had not assessed the evidence in any detail, including as to questions of causation; accordingly, it assessed the evidence afresh.  One example was an individual who had been asked to visit the Nottingham Glee Comedy Club, but was reluctant to do so as he thought it had something to do with the TV show.   Whilst the Court of Appeal accepted that some of this evidence had little probative value, it thought that it did show that the similarity between the Mark/sign and the respective services had led to a significant number of persons believing that the two were connected.
Detriment to distinctive character / repute
  • The Court of Appeal decided that 'wrong way round confusion' was also relevant to the question of whether there was the necessary link between the Mark and the sign for the purposes of assessment of detriment to distinctive character/repute, i.e., in assessing whether the use of the sign would call the Mark to the mind of the average consumer.  This arguably takes the relevance of ‘wrong way round confusion’ one step further than the finding on likelihood of confusion.  Fox argued that, given that this claim is based on the earlier Mark's reputation, the link should be made by average consumers who are familiar with the Mark upon seeing the sign.  However the Court of Appeal did see a potential role for 'wrong way round confusion': given the Court’s central task of a global assessment, taking into account all relevant circumstances, it was enough that the average consumer would make a connection between the sign and the Mark. It did not matter for this assessment if consumers came across glee before they came across the Mark.  

  • It also rejected Fox’s argument that the claim should fail as the detriment (i.e. that people might be put off from attending CEL’s venues) generally only applied to people who had not heard of CEL.  The Court said that the protection extended to both actual and potential customers and that the capacity of the mark to stimulate attendance at CEL's venue was seriously impaired. Finally whilst Fox had adopted the name in good faith, and its work was a creative one, it thought its use was not in due cause.  

Passing off

  • Rejecting the notion that this conclusion was internally inconsistent, the Court of Appeal also agreed with the Judge (whilst noting the conciseness of his decision on this point) that there was no passing off.  In particular, Kitchin LJ stressed the need to distinguish carefully between confusion and misrepresentation; the evidence as to confusion in this case did not amount to a misrepresentation which had caused a significant number of consumers to believe that there was the same or a connected business behind the comedy venue and the TV show.   This outcome is difficult to reconcile with the finding on trade mark infringement. 

Series mark challenge

  • CEL’s marks are a series of two marks.  Fox argued that allowing series marks to be registered is contrary to the requirement in the Trade Marks Directive that a trade mark must be a sign in the sense of being a single sign and capable of being 'graphically represented'.  The UK IPO made written submissions to the effect that a series of trade marks is a bundle of separate and individual marks, each of which must comply with the requirements for registration under the Directive.  This issue will be determined by the Court of Appeal at a later date but it is clearly a point of general significance, given the number of series marks on the register. 

What happens next?

Aside from the remaining issue relating to series marks, it seems likely that Fox will seek to have at least the issue of ‘wrong way round confusion’ determined by the Supreme Court, no doubt with the possibility that the case is referred to the Court of Justice, given the competing arguments relating to its legal relevance.  It is also interesting to note from the judgment that the appeal relating to the Judge’s remedies decision (in which he had ordered a final injunction, subject to Fox being able to state that the programme was previously known as glee) was settled between the parties.  

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