Reasons to be Gleeful?

At the Court of Appeal on 8 February, film and TV giant 20th Century Fox failed in its bid to appeal against the 2014 decision of the High Court which ruled that the title of its "Glee" television show had infringed a registered trade mark belonging to Comic Enterprises Limited which runs The Glee Club - a small chain of comedy and music venues in the UK.

In the original High Court action - hailed at the time as a "David v Goliath victory" the Judge, Roger Wyand QC upheld Comic Enterprises' claim for trade mark infringement, noting that 20th Century Fox could have "no objective justification" for its use of the name in circumstances which "diluted" and "tarnished" the distinctive character of the registered mark in such a way that (Comic Enterprises argued) potential customers for their clubs were deterred from visiting by a mistaken and confused belief that there was some commonality with the 20th Century Fox TV show which centres upon a High-School singing club - particularly since both engaged in live entertainment (there was a live touring version of the musical TV show) and the sale of branded merchandise. The Judge rejected an additional claim by Comic Enterprises for Passing Off (a claim which was also rejected by the Court of Appeal).

In a subsequent hearing on remedies in April of last year, Fox had been ordered to pay £100,000 on account of damages which, when finally assessed could total several million pounds, and was made subject to an injunction to cease using the infringing name (although the injunction was stayed pending the hearing of the Appeal which came to court this week).

At the Court of Appeal, Fox were unsuccessful in seeking to argue that no infringement had taken place and the Court upheld the remedies ordered against it.

Both parties, however, appear determined to take their cases to Europe arguing that aspects of European law are being breached by aspects of the rulings made so far.

Nonetheless, this case illustrates how a registered trade mark, obtained at relatively modest cost, can be a useful and powerful asset to even a medium-sized business in taking on one of the giants of the media and entertainment world. If a business feels that the identity and distinctiveness of its brand is central to its success then it would be wise to consider seeking registered trade mark protection in some form for that brand, and once obtained, to enforce that mark where appropriate against infringers large or small. We have seen in work we have done for our own clients that taking such action can send a powerful message in the relevant industry which can have a value beyond that of any damages or injunctions obtained in the action itself.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.