A recent decision of the United Kingdom Court of
Appeal has confirmed that "wrong way around confusion"
occurred in the GLEE case.
The GLEE CLUB
The plaintiff operates a number of entertainment venues in the
United Kingdom. The entertainment generally consisted of
stand-up comedy acts, but has also included live and recorded music
and night club and cabaret entertainment. The plaintiff is
the owner of a series of two design marks which are reproduced
In the UK trademarks that are closely related can be registered
as a series of marks.
The mark was registered in association with live comedy
services, night club and cabaret entertainment and related
services. By 2009, the plaintiff had made extensive use of
its mark in connection with its business and the provision of its
services. The plaintiff also promoted its business using the
two words GLEE CLUB. The plaintiff's business has been very
20th Century Fox Film Corporation ("Fox") is a
well-known U.S. entertainment company. In the late 2009 it
launched in the U.S. and in the U.K. a musical comedy television
series called Glee. By the time of the trial the series was
in its fourth season.
The television series is a musical comedy about a high school
singing club at a fictional high school located in Ohio. The
club was called New Directions and competed with singing clubs and
other schools in what was described as the show choir competition
circuit. The Glee television production has been very
successful and has achieved high ratings in the U.K. The
series also won many awards and generated a great deal of
There have been live concert tours, songs released as singles,
albums and through the iTunes store. Fox has licensed a wide
range of merchandise all related to the television series.
The plaintiff's principal monitored the activities of the
Fox television series thinking that it might not be
successful. However, it was found that the presence of the
Glee series was damaging the plaintiff's business.
The Plaintiff's Action
Proceedings were instituted and the action proceeded to
trial. At the trial the plaintiff presented evidence of a
number of witnesses who knew of the Glee TV series and on seeing or
hearing of the plaintiff's business believed it was in some way
connected with the series.
The trial judge found that the plaintiff's mark had been
validly registered and was infringed. The judge granted a
final injunction restraining Fox from using the word Glee as the
name of its series, save that Fox was entitled to say that the
series was previously known as Glee. Finally, the judge
awarded to the plaintiff damages or, at its option, an accounting
of profits with an immediate payment to the plaintiff of
£100,000 on account of the damages or profits.
Fox appealed from this judgement and argued that they had not
infringed the plaintiff"s mark.
The court observed that whether a particular instance of
confusion was "right way around" or "wrong way
around" really did not matter and simply related to the order
in which the consumer happened to come across the respective
marks. In both cases, if consumers think that the services in
issue came from the same undertaking or economically linked
undertakings this may be equally damaging to the distinctiveness
and the functions of the mark.
After a detailed review of the relevant U.K. law and the facts
of the case, the court dismissed the appeal.
The Canadian Position
Cases similar to this one in Canada are dealt with by the courts
in a similar fashion although the concept is referred to as
"reverse confusion". This concept seems to have
been borrowed from U.S. case law.
In substance, reverse confusion is highly fact specific and
depends on a number of key facts. In the typical case, the
junior trademark user, who is aware of the senior user,
but which has much greater economic power saturates the market
with advertising of a confusingly similar mark, overwhelming the
marketplace power and value of the senior user's mark.
The Canadian cases emphasize that the issue of reverse confusion
is considered in exactly the same way as a claim to forward
confusion. No special considerations apply and in both
situations the presence or absence of a likelihood of confusion is
This decision serves to confirm that confusion can occur in a
reverse or a "wrong way around" fashion. However,
it also shows the difficulties that can arise in securing
trademarks in multiple jurisdictions. No doubt Fox's GLEE
mark was protected in most places but unfortunately not in the
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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