Has the curtain come down on Twentieth Century Fox's final
stab at defending the Glee television series against a trade mark
claim by a chain of UK comedy clubs called the Glee Club?
In what has been presented as a "David and Goliath"
battle, the UK club chain, which dates back to 1994, sued Fox in
2011 after it launched the very successful Glee TV series in the
UK. Rather unusually, the clubs claimed "wrong way round
confusion". This was based on evidence that members of the
public who were aware of the TV show and then came across the clubs
for the first time thought that they were derived from the show,
rather than the other way around.
The club chain won its trade mark claim based on such confusion
at the English High Court in 2014 and at the Court of Appeal in
2016, subject to one final issue which the Court of Appeal has now
ruled on. Fox counter-claimed that the club's trade mark
registration for the Glee Club logo was invalid under EU law,
because it consisted of a "series" of two versions of the
logo (one in colour, and one in black and white). If the
registration was invalid, the club's case would collapse,
because it only won based on that registration, and lost its
separate passing off claim.
The Court of Appeal ruled that the club's trade mark
registration was valid under EU law. The UK rules allow a
"series" of different versions of a mark to be bundled
together under a single registration, provided the various versions
are materially identical. The Court of Appeal held that this system
is compatible with harmonised EU trade mark law (which does not
itself provide for such a system), and that the two versions of the
Glee Club logo amounted to a valid series. In particular, the UK
system did not contravene the EU requirement that a trade mark must
be capable of being graphically represented in a clear,
self-contained, easily accessible, intelligible, durable and
objective manner. The Court held that it was not necessary to refer
this case to the EU Court of Justice, since the position was
In principle, the decision removes the uncertainty over the
validity of tens of thousands of UK marks registered under the
"series" system (which, in particular, can offer a degree
of cost-savings for registrations of applicable bundles of marks).
However, in order to amount to a valid series under UK law, such
marks will still need to "resemble each other as to their
material particulars and differ only as to matters of a
non-distinctive character not substantially affecting the identity
of the trade mark" (under section 41(2) of the Trade Marks Act
Subject to any successful appeal by Fox to the English Supreme
Court, or an out-of-court settlement between the parties, Fox will
need to face the music of the various sanctions that were stayed
pending the outcome of the appeal. In principle, Fox will be
required to rename the Glee TV series in the UK, in any ongoing or
future reruns and DVD and digital sales
(although they can refer to the fact that the series was previously
known as Glee). Fox will also need to deliver up or relabel any
physical and digital stock in its control (but not stocks already
supplied to customers). Fox has been spared from having fully to
disclose its accounting records for the series, but the club will
be entitled to pursue it for damages or an account of Fox's UK
profits for the series (Fox having been previously ordered to make
a Ł100,000 interim payment).
This is the first time that an English Court has considered and
held that the UK trade mark "series" system is compatible
with EU law. Unsurprisingly, Fox is reportedly seeking to appeal
this decision to the Supreme Court – and could possibly again
seek a reference to the EU Court of Justice – since the whole
case could ultimately hinge on this issue. Further, although this
is not the first time English Courts have taken "wrong way
around" confusion into account, this might be another ground
Case  EWCA 455
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