A British comedy club boss who sued a Hollywood giant over the American television show Glee today said small businesses should take heart from a High Court ruling on his claim.
Comic Enterprises claimed that Twentieth Century Fox’s broadcast of Glee in the UK had breached its trade mark rights to the phrase The Glee Club. Twentieth Century Fox disagreed.
A judge today made one ruling in favour of Comic Enterprises and one in favour of Twentieth Century Fox after a High Court trial in London.
Deputy High Court Judge Roger Wyand QC said Comic Enterprises – which operates Glee Club comedy venues – had established that Twentieth Century Fox had infringed its trademark rights to the words “The Glee Club”. He said Comic Enterprises’ trademark was “suffering detriment” and there was a “likelihood of confusion.”
But the judge said Comic Enterprises had not established that Twentieth Century Fox had “passed off” Glee as being associated with Glee Club venues. He said he was not convinced that “such confusion is likely to be said to cause damage” to Comic Enterprises.
The judge made no mention of what the consequences of his ruling were and said subsequent issues would be analysed at future hearings.
But a spokesman for Comic Enterprises’ director, Mark Tughan, said after the ruling: “The TV show could now be taken off air in the UK, Glee merchandise and DVDs removed from UK shops and music downloads halted.”
And a lawyer representing Comic Enterprises said the trade mark infringement claim had succeeded and “inevitably damage will have been caused as a result”. He said the court would determine the extent of that at a later stage.
Mr Tughan, who said his first club had been founded nearly 20 years ago, added: “Smaller independent businesses should take heart from today’s decision, as it clearly shows that trade mark infringements by large multi-national companies can be effectively challenged in British courts.”
Judge Wyand said, in a written ruling, that Glee was in its fourth season and had been running for more than four years. He said it had been very successful and had achieved high ratings in the UK.
The judge said album compilations of songs performed on the show had been sold in the UK, two world concert tours had included performances in Manchester and London and Glee merchandise had been sold.
“Comic Enterprises says that all these activities, when carried out the United Kingdom, infringe the (trademark) and pass of Twentieth Century Fox’s show and associated products as being associated in the course of trade with Comic Enterprises,” said Judge Wyand. “Twentieth Century Fox denies infringement and passing off.”
The judge concluded that Comic Enterprises’ claim on infringement succeeded. But he said the company’s claim on “passing off” failed.
“I believe that (the) evidence taken as a whole shows that there is a likelihood of confusion,” he said.
“Twentieth Century Fox’s use causes dilution and tarnishing. Continued use of the sign in such circumstances cannot be in accordance with honest practices in industrial or commercial matters. Twentieth Century Fox has infringed the (trademark).”
But he added: “I am not convinced that such confusion is sufficiently likely to be said to cause damage to Comic Enterprises ... The passing off case fails.”