It's glum for glee: Fox judge considers Wolf's Head and Comic sees the funny side

Nearly two years ago, in March 2012, the IPKat first encountered the fascinating dispute between a small-scale club operator and purveyor of live entertainment on the one side, and movie-and-media mogul Twentieth Century Fox (TCF) on the other. What was reported there was a preliminary skirmish in which the honours went to TCF, which said it should be the High Court and not the Patents County Court that would decided whether TCF's hit TV series "glee" [with a deliberately small and somewhat annoying small "g", notes Merpel, except on TCF's website for it, where it's "G"] infringed Comic Enterprises' series of registered trade mark containing the words "The Glee Club" and constituted an act of passing off.

Now it's time to tell you all about the trial of the substantive issue -- and here to tell it is Cerryg Jones (head of Brands & Designs at Wragge & Co LLP, which acted for the successful claimant. Thanks, Cerryg, it's good to have your inside track on this ruling.  This is what Cerryg says:

"How is a series mark to be construed for the purposes of assessing infringement? Is ‘wrong way round’ confusion sufficient to establish a likelihood of confusion? After the decision of the Court of Justice of the European Union (CJEU) in Wolf Head (Case C-383/12, noted here by the IPKat), what evidence is required to establish dilution and tarnishment? Roger Wyand QC, sitting as Deputy Judge, addresses these issues and more in his recent judgment in Comic Enterprises v 20th Century Fox [2014] EWHC 185 [not yet on BAILII, but you can check it out here or download it here].

Comic Enterprises operates live entertainment venues in Birmingham, Cardiff, Oxford and Nottingham. The venues are primarily used for stand-up comedy and live music. In 1999 it registered UK trade mark 2200698, a series of two trade marks in relation to a number of services, including entertainment services, comedy services, the provision of live and recorded music and the production and presentation of live shows. The two marks are identical except that the first in the series claims the colours red, black and white whereas the second is monochrome.

As fans of the series will know, Fox's television series glee follows an American high school singing club at the fictional William McKinley High School in the town of Lima, Ohio.

Comic Enterprises found that potential customers were assuming a connection with the TV series, and were being put off attending the venues. It brought a claim for trade mark infringement under sections 10(2) and (3) of the Trade Mark Act 1994 [= Arts 5(1)(b) and 5(2) of the Trade Mark Directive] and passing off; Fox counterclaimed that the trade mark was invalid. The Court found the trade mark to be valid and that it was infringed under both sections 10(2) and (3).

A number of issues arose, including the following:

* How is a series mark to be construed for the purposes of assessing infringement?

For cats who appreciate a good sing-along

As all aficionados of series marks will be aware, section 41(2) of the Trade Mark Act 1994 provides that "[a] series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matter of a non-distinctive character not substantially affecting the identity of the trade mark". Fox alleged that, as the trade mark was a series mark, to assess infringement the court had to identify a single mark which represented both of the series marks. It reasoned that, because the first mark in the series claimed certain colours and the second monochrome mark covered all colours, the colour claim applied to both versions of the mark for the purposes of assessing infringement.

The court rejected this, explaining that it did not see the colour combination as being a part of the distinctiveness of the registered trade mark. The distinctive characteristics of the two marks were the words and device, which were identical in both marks. In any event, Mr Wyand QC noted that "[i]f the registration was not for a series mark but for a single mark, being the monochrome version, that would not fall foul of the requirement for a single point of comparison. I do not see why adding a further mark to the monochrome version, where that further mark is totally subsumed within the monochrome version, changes the position."

* Was 'wrong way round' confusion sufficient to establish a likelihood of confusion?

The evidence of confusion before the court included instances where members of the public, on seeing Comic Enterprises’ trade mark, assumed a connection to the TV series, not the other way round. Mr Wyand QC referred to this as 'wrong way round' confusion. The question was how this affected the "likelihood of confusion" test for the purposes of section 10(2)?

Fox argued that the relevant date for assessing a likelihood of confusion was the date of the launch of the television series, December 2009. It cautioned against relying on evidence of people's reactions after that date when the series had been extremely successful. It submitted that these reactions could not shed any light on whether an average consumer would connect the mark with the sign at the relevant date. Mr Wyand QC disagreed. He held that the issue was whether there was a risk of a likelihood of confusion, irrespective of the direction in which it flowed. Further, he held that evidence from when the sign was being used on a large scale was probative, adding that if Fox had been using the sign on a large scale for a couple of years and there had been no evidence of confusion, then it would be relying on that lack of confusion in its defence.

* Was there dilution or blurring of the trade mark?

Having concluded that the mark had a reputation, that the mark and sign were similar, and that the use of the sign in dispute would call to the mind of the average consumer the mark, it fell to be considered whether the use of the sign was detrimental to the distinctive character or repute of the trade mark under section 10(3). Fox relied on Intel (Case C-252/07, noted here by the IPKat), to allege that there was no evidence of a change in economic behaviour of Comic Enterprises' customers. It also sought to rely on Wolf Head (Case C-383/12), a decision of the CJEU which was handed down after the trial. The latter held that:

"34. According to the Court's case-law, proof that the use of the later mark is or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corporation, paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment)   ...

37. The concept of 'change of economic behaviour of the average consumer' lays down an objective condition. That change cannot be deduced solely from the subjective elements such as consumers' perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No. 207/2009, in as much as that similarity does not cause any confusion in their minds."

Comic Enterprises had adduced evidence that potential customers were discouraged from attending Comic Enterprise's clubs in the mistaken belief that they were linked to the television series. It had also adduced evidence from its marketing company which explained that, from a marketing perspective, the television series presented a real threat to the trade mark which had to be addressed in its marketing programme.

Mr Wyand QC concluded that this was sufficient objective evidence to show a change in economic behaviour of the average consumer and that the trade mark was suffering detriment though swamping. He noted that "[i]t is not necessary for a Claimant under section 10(3) to produce evidence quantifying a change in economic behaviour. All that is needed is objective evidence that there is or will be such a change."

This Kat has taken a look at the judgment, which good to him, though if he were a betting Kat he might fancy TCF lodging an appeal, if only because 'wrong way round' confusion is still in its infancy and it would be a pity not to give the Court of Appeal a chance to consider its parameters.

How to pronounce names (other than Cerryg, which is unaccountably missing from this database) here