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‘Glee’ less than happy after trade mark strife (Brands & IP Newsnotes - Issue 2)

28 March 2016

We’re all familiar with the classic trade markdispute. But can you sue for trade markinfringement if the brand using your name is actually more famous than your own? In February, the Court of Appeal said you could.

Close, but no Harmony

‘The Glee Club’ is a network of comedy clubs in Britain which registered a trade mark in 1999. The 20th Century Fox TV series Glee first aired in the UK in 2009. At one point, 2.2m Britons tuned in to follow an Ohio high school singing club and its members’ battles with social stigma. Before long, people assumed that the club and the show were connected. Comedy fans questioned whether they’d enjoy a song-anddance routine and avoided the club, which had difficulty advertising under its own name. The Glee Club took 20th Century Fox to court.

The ‘wrong way round’

The Glee Club argued that Fox had used a similar sign to market a similar service, leading to public confusion between the brands. Fox argued that ‘wrong way round’ confusion’, where consumers confuse the Glee Club and its services with the more famous Glee TV series, shouldn’t count. If it did Fox warned, this would mean a brand too unfamiliar to confuse anyone when it arrived in Britain would be punished for becoming famous enough to confuse, despite trading lawfully in the meantime. In deciding that it didn’t matter which mark consumers encountered first, the Court of Appeal held that Fox had infringed. It follows that a brand can become infringing over time.

The Court’s consideration of the Glee Club’s logo is noteworthy to boot. It held that Fox had infringed the logo even though it had not used the ‘device’ elements of the logo or the entirety of the words incorporated in it. That may give comfort to owners of logo marks about the potential strength of their rights.

This article was published in the Brands & IP newsnotes publication - issue 2.

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