A step too far – a warning for Private Prosecutors
Fans of the global cult phenomenon, ‘Glee!’ (the hit US series) may be upset to learn that Twentieth Century Fox has just lost its battle with The Glee Club, who claim that the popular programme had infringed its trademark.
The result could mean that the programme may have to be completely rebranded, or prevented from airing episodes, re-runs or producing branded merchandise altogether.
The Glee Club opened in Birmingham in 1994 as a comedy and live music venue, and has gone on to open three further venues. The Glee Club trademark was originally registered in 1999. The first episode of ‘Glee’, about a singing club at a fictional US high school, was aired in 2007.
Comic Enterprises, who own the trademark, issued proceedings against Twentieth Century Fox in September 2011. They claimed that their reputation had been damaged and that there was bound to be confusion caused by the similarities in the names and a claim for passing off was also put forward.
In his findings, Deputy High Court Judge Roger Wyand QC, concluded that the trademark infringement claim succeeded on the basis that “evidence taken as a whole shows that there is a likelihood of confusion. 20th Century Fox's use causes dilution and tarnishing. Continued use in such circumstances cannot be in accordance with honest practices in industrial or commercial matters”.
He did however, find against Comic Enterprises’ claim for passing off, adding, that he was “not convinced that such confusion is sufficiently likely to be said to cause damage. The passing off case fails”.
Whilst the Club’s owner, Mark Tughan believes he has been vindicated for having won his “David and Goliath” batter, Twentieth Century Fox have confirmed that they will be appealing the decision.
However, let’s say that the appeal is not successful – what are the potential implications of the finding of the High Court?
There is the obvious remedy of damages, or an account of profits. This will be appropriate where it there is a link between a loss of profits or business as a result of the use by the defendant of the claimant’s trademark.
The more serious remedy, however, would be an injunction preventing the show being aired, which would include any re-runs. There is also the possibility that infringing goods, materials or articles – for example any merchandise, box sets or DVD'S would have to be destroyed and removed from sale. The other remedy may be that the show may have to be entirely re-branded, including all merchandise.
The High Court in previous cases has been guided by the conduct of the infringer as to the relief that will be awarded. For example, where an honest and unwitting infringer admitted liability, this was reflected in the terms of the injunction granted (Microsoft Corporation v Plato Technology Ltd  EWCA Civ 1854).
The decision of the Court, in respect of relief, is to be made at a later date, but one would assume that the ‘Gleeks’ amongst you will be hoping that, if the appeal is not successful, the Court will take the view that the damage to The Glee Club hasn’t been substantial enough to warrant a complete obliteration of Glee as we know it.
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