May 30, 2014

Comic Enterprises Limited v Twentieth Century Fox Film Corporation [2014] EWHC 185 (Ch)

Introduction

This case concerns a David-and-Goliath action for trade mark infringement and passing off in which ‘David’ is Comic Enterprises Limited (“CEL” ), a small-to-medium-sized enterprise which operates entertainment venues in the UK under the name “the glee club”; and ‘Goliath’ is Twentieth Century Fox Film Corporation (“Fox”), the company behind the well-known television series, glee. Whilst CEL was successful in its claim for trade mark infringement, Fox obtained partial revocation of CEL’s trade mark and successfully defended CEL’s claim for passing off.

Background

The claimant, CEL, has been operating live entertainment venues under the name “the glee club” since 1994. Its venues are predominantly used for live comedy shows but also host other entertainment events, including live music. CEL is the proprietor of the following UK series trade mark (the “Mark”) in classes 25 and 41, which was filed in 1999.

The first mark in the series is claimed to be in black, white and red, whilst the second is represented in monochrome.

The defendant, Fox, is the well-known American media and entertainment company. Fox produces a television show called “glee” which focuses on a high school singing club in the US. The show has enjoyed considerable success in the UK and songs performed on it are available for sale and download in the UK. There have also been two concert tours which included shows in the UK, and Fox has sold merchandise linked to the tours and programme.

CEL alleged infringement of the Mark by Fox as well as passing off based on the unregistered marks “Glee Club”, “Glee” and “the Glee Club” without the device. Fox denied these allegations and counterclaimed for partial revocation (for non-use) and partial invalidity (on the inherent ground of descriptiveness) of the Mark.

Decision

This case discusses many different facets of trade mark law. The following summary does not attempt to cover all of them, but focuses primarily on the relevance of colour in series marks, and the infringement and passing off claims.

The effect of colour in a series mark

Two key questions concerning the scope of the registration arose from the fact that the first mark in the series is a colour mark.

The first arose from the unusual description that accompanied the Mark on the electronic register, namely the text: “LIMITATION: The applicant claims the colours red, black and white as an element of the first mark in the series”. It was unclear whether this text operated, in respect of the first mark in the series, as a “claim to the colours” (so that colour is just one factor to be taken into account in the assessment of likelihood of confusion) or whether the mark was limited to those colours (such that only marks in those colours could be said to infringe it). This was resolved by the parties writing to the Acting Divisional Director of the UK registry, who confirmed that the former interpretation was correct, the word “LIMITATION” being an artefact of migrating the registration to a new electronic system.

The second question was whether, as argued by Fox, the monochrome mark should be limited to the colour combination claimed in the first mark in the series, on the basis that a valid series of trade marks can vary from one another only “as to matter of a non-distinctive character not substantially affecting the identity of the trade mark”, which Fox argued would not be the case if the monochrome version covered other colours as well. However, the Court rejected this. It considered that the distinctive elements of each version of the Mark were the words and the device, and that the colour claim in the first version did not substantially affect the distinctiveness of the Mark. Further, where, as in this case, the colour version is “totally subsumed within the monochrome version”, the court held that the marks in the series would still provide a single point of comparison, and adding the colour mark to the series should not change the position that the monochrome version covers reproductions of the device in a variety of colours.

Infringement – Likelihood of Confusion

When assessing infringement under s10(2)(b) of the Trade Mark Act 1994, the Court found that the Mark was similar to the sign used by Fox (i.e. “glee”) but not highly so. This was due to: (i) the absence of the device; (ii) the absence of the words “the” and “club”; and (iii) the differing conceptual meaning, as the Mark refers to a club whereas the sign does not (in the absence of knowledge of the underlying television series).

For the purposes of the assessment of likelihood of confusion, the claimant relied on only one example of actual confusion, where a person saw an advert for Fox’s television show and assumed that it was connected to CEL. However, there were also several examples of so-called “wrong way round” confusion, where people seeing one of CEL’s venues thought it was connected to Fox’s television show. The Court held that, for the purpose of registered trade mark infringement, there was no need to show “right–way–round” confusion; a mere likelihood of confusion (in whichever direction) is sufficient. Accordingly, the infringement claim succeeded.

Infringement – Reputation

CEL’s claim for infringement under s10(3) also succeeded. The Court held, when dismissing Fox’s claim for partial invalidity, that the mark had acquired distinctiveness by the date of application for registration and, on this basis, it considered it also enjoyed a reputation. Further, its reputation would have grown since then. The Court found that the similarity between the Mark and the sign was such that the use of the sign by Fox would cause the Mark to be brought to mind by the average consumer, and the distinctive character and repute of the Mark had been damaged by Fox’s use of the sign because potential customers were put off attending CEL’s venues because they thought that there was a connection to the television show.

Fox sought to raise a defence under s11(2)(b), on the basis that its use of the word “glee” was descriptive and in accordance with honest practices. However, this was rejected by the Court on the grounds that an insufficient proportion of the public would be aware of the potentially descriptive nature of the word “glee” and thus it would not be understood by the average consumer to be a description of the television show. In addition, Court held that the where the mark causes a likelihood of confusion, continued use cannot be considered to be in accordance with honest practices.

Passing Off

An essential element of the tort of passing off is that a defendant’s use of the sign gives rise to a misrepresentation. As set out above, in this case there was only one instance of actual confusion and several of “wrong way round” confusion. The court considered that such “wrong way round” confusion could not be said to be a misrepresentation by a defendant as it is not generated by the defendant’s use of the sign. Further, the court was unconvinced that “right way round” confusion was sufficiently likely to be said to cause damage to CEL. The claim for passing off therefore failed.

Comment

Colour

In the UK, it has been established that trade marks registered in monochrome cover that mark in all colours. This issue was particularly pertinent in this case, as it concerned a series mark which comprised the same mark in colour and monochrome. Although the Court is meant to identify for the purposes of assessing infringement, a single point of comparison which embodies the distinctive features of the relevant mark, it was not always clear in this case whether the Court was evaluating the infringement of the colour version or the monochrome version of the Mark.

Since judgment was handed down in this case, a Common Communication on European trade mark Common Practice has been published. Although this Communication does not specifically address series marks, as they are a peculiarity of UK trade mark law, the Communication clearly indicates a policy decision that the same mark in different colour combinations should not be regarded as being identical. It will be interesting to see how the UK registry interprets this guidance as regards series marks which are registered in multiple colours and whether the argument run by Fox (that the monochrome version of the mark should also be regarded as having a colour limitation) will be successful in future.

Wrong way round confusion

This case establishes that “wrong way round” confusion is sufficient for the purposes of establishing registered trade mark infringement but not for the purposes of passing off. In this case, the court justifies this on the basis that passing off requires a ‘misrepresentation’ whereas the test for infringement is a likelihood of confusion. However, given that these actions are both designed to protect the same essential function of a trade mark (albeit an unregistered trade mark in the case of passing off), i.e. that of designating the origin of goods or services, it is perhaps surprising that there should be this degree of divergence. In this case, the problem appears to be heightened by the fact that the reputation of Fox was significantly more extensive than that of CEL, thereby increasing the instances of “wrong way round” confusion. However it is not easy to see why later extensive use of a sign by a defendant should help in a defence to an action for passing off where there is confusion that causes loss to the claimant.

Published with minor alterations in Intellectual Property Forum, Issue 97, May 2014