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Gloom for glee

A glee club is a musical group which traditionally specialises in the singing of short songs – glees. The first such club is said to have been established in Harrow School in 1787. Over the next 100 years, glee clubs became very popular, both in the UK and the US. In the UK however, they were then superseded by choral societies. In the US, on the other hand, the term remains in use, particularly for choirs found in North American colleges and universities.

As if to prove the point, the tv network, Fox, created a television series called glee that focused on the fictitious William McKinley High School glee club, known as New Directions.

Since its first broadcast in 2009, the series has become one of Fox’s most successful programmes, both in the US and in the UK, where it is now aired on the Sky 1 tv channel.

In the wake of the success of the programme, concert tours featuring cast members have taken place, including two concerts in the UK in London and Manchester.

In 1994, fifteen years before Fox began broadcasting its first season of glee, Mark Tughan opened a comedy club called The Glee Club in the English city of Birmingham. It proved to be successful and, since that opening, further comedy clubs operating under The Glee Club banner have been opened in Cardiff, Nottingham and Oxford. These clubs offer both stand-up comedy, as well as live musical entertainment. The company operating these clubs, Comic Enterprises, owns a UK trade mark registration for a stylised form of the phrase, the glee CLUB, that was granted in April 2001 and covers inter alia “comedy services” and other music and entertainment related services in Class 41.

It would appear that, as a result of the success of Fox’s tv series, and the nature of the subject matter of the programme, potential customers of The Glee Club were being put off attending those clubs because those (potential) customers believed them to be associated in some way with the glee tv programme. As a result, Comic Enterprises brought trade mark infringement and passing off proceedings against Twentieth Century Fox Films before the English High Court. In response, Fox attacked Comic Enterprises’ UK trade mark registration both on the ground of descriptiveness (Section 3(1)(c) and Section 47(1) of the UK Trade Marks Act), given the dictionary meaning of glee club, and on the ground of five years non-use of the registered mark in the UK (Section 46 of the 1994 Act).

The Deputy Judge (Mr. Wyand QC) dealt first with the issues of invalidity and revocation. He found that glee club was now an obscure term in the UK that was little known. He also found that Fox had failed to establish the reaction of even the average choral singer in the UK to the phrase. That being the case, and noting that Comic Enterprises’ UK trade mark also contained a device element, Mr. Wyand dismissed the Section 3(1)(c) ground of invalidity (descriptiveness).

Turning to non-use revocation, the Deputy Judge decided that, based on the evidence before him, the UK trade mark registration under attack should survive for the following Class 41 services:

“Live comedy services; nightclub and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings”.

Moving on to trade mark infringement, Mr. Wyand was very taken by the evidence given by one of Comic Enterprises’ witnesses (Ms. Jones) who watched Fox’s glee programme and was also aware of The Glee Club. In her evidence before the Court, she maintained that she assumed a connection between the glee tv show and Comic Enterprises’ (The Glee Club) business when she saw a trailer for the tv show. There was also evidence given by consumers who began by being aware of the tv programme and on seeing, or hearing of, The Glee Club, believed that the latter was connected with the former. Mr. Wyand styled this as “wrong way round” confusion.
Bearing the above in mind, and finding that

•    The two marks were similar; and
•    Comic Enterprises’ remaining Class 41 services were similar to the tv (and concert) services provided by Fox in the UK;

Mr. Wyand found trade mark infringement under Section 10(2) of the UK’s 1994 Trade Marks Act. In doing so, he rejected Fox’s argument that people who gave evidence about their reactions after the show had become successful could not shed light on whether or not the average consumer would have been confused (between The Glee Club and glee) at the date Fox first used the programme title (glee) in the UK. Mr. Wyand commented that, if Fox could have obtained convincing, consumer evidence that, even after glee had become a successful series, the relevant consumers were not confused with The Glee Club, they would certainly have been relying heavily on that lack of confusion in this action.

As far as the ground of infringement based on Comic Enterprises’ reputation in The Glee Club was concerned (Section 10(3) of the 1994 Act), the Deputy Judge took full account of the evidence which suggested that potential customers had been put off visiting The Glee Club because they believed it was in some way associated with Fox’s programme. That reaction, in Mr. Wyand’s view, showed that such (potential) customers were changing their economic behaviour and that Comic Enterprises’ mark was therefore suffering detriment because of its “swamping” by Fox’s use of glee. As Fox had no due cause to use glee for either the tv show or the associated concerts, a finding of infringement under Section 10(3) became inevitable.

Finally, dealing very briefly with the passing off action, Mr. Wyand stated that the damage suffered by Comic Enterprises was caused by its (The Glee Club) venues being confused with Fox’s tv show and its potential customers thereby being put off. There was little or no evidence that Fox’s use of glee constituted a misrepresentation. The only evidence, which suggested that it did, had come from Ms. Jones. All of the other evidence was on “wrong way round” confusion which was not the same as a misrepresentation. In the absence of a convincing case being made on misrepresentation, Mr. Wyand dismissed the passing off action.

According to the General Court case between Danjaq and Mission Productions (T-435/05), a film title (in that case Dr. No) is an indicator of artistic, but not commercial, origin and, as such, is not a trade mark. If that is the case, it seems difficult to explain how the use of an English dictionary word (glee), as the title of a tv series, can constitute use of the word in a trade mark sense. If EU trade mark law has reached a situation where use of (an ordinary dictionary word) in a non-trade mark sense can constitute trade mark infringement, then a serious rethink is urgently required by the necessary authorities. What next, an unauthorised book about the TV programme Friends, entitled Friends, being taken off the Amazon website, and the shelves of your local bookstore, prior to being pulped?

Finally, how can this decision be squared with the various Google keyword cases decided by the European Court? In those cases, it was found that Google was not using the third party owned trade marks in a trade mark sense and that therefore could not be found to have infringed the third party rights.

No doubt all of these issues will be resolved if and when Fox files an appeal at the Court of Appeal.
On a practical level, the key witness in the above case (Ms. Jones) was identified through social media (Twitter). This perhaps illustrates an important point about the use of such social media when attempting to find appropriate witnesses regarding a likelihood of confusion.