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two UK registered figurative trade marks which featured the words 'The Glee Club'. TCF produced a television series, 'glee', about a fictional singing club at a fictional American high school. No, said the court, there was no passing off, but yes, there had been trade mark infringement. The question now arose as to what to do about it. Comic wanted (i) an injunction to restrain trade mark infringement; (ii) delivery up/destruction of infringing materials; (iii) an account of profits; (iv) disclosure of enough information to determine how to proceed in terms of an inquiry into financial relief; (v) a publicity order; and (vi) interim payment pending calculation of the final sum.
Being very judicial about it, Roger Wyand QC ruled as follows:
*While the balance of all the relevant factors favoured the granting of an injunction, such an injunction ought to allow TCF to refer to the fact that the programme had been previously known as 'glee'.
* As for delivery up, it would be proportionate to order delivery up or relabelling, where appropriate, of physical and digital copies of its programmes in TCF's possession, power or control -- but it wouldn't be proportionate to make TCF try to get back stocks that had been sent out to customers.
* Comic would be allowed to seek an account of profits on the basis that TCF could provide a rough assessment of the total profit made by the programme. Since the actual figures were commercially sensitive and protected by a confidentiality order, there was no need for TCF to produce extensive disclosure to support that evidence.
* A publicity order to be granted since it was important for viewers of "glee" to know about the court's judgment.
* While it was bound to be difficult to assess the quantum of damages and/or account of profit that would be eventually awarded, £100,000 seemed to be a good shot at a conservative interim payment in respect of damages or an account of profits.
* In terms of timing, it was appropriate to stay the effect of the injunction, but not the publicity order -- since that was important if further damage to Comic's trade mark was to be minimised.
IP Enforcement Directive 2004/48 in which the making of a publicity order has been of such prime importance. Merpel finds the litigation literally instructive: before it started, she knew about the "glee" programmes but hadn't heard of the Comic Enterprises' Glee Club.
Comic Relief here
More on this case from the Nottingham Post, the Birmingham Mail and Bloomberg.