In a case which reveals that relative corporate minnows can succeed in upholding their intellectual property rights against much larger companies, the High Court has ruled that the giant Hollywood studio behind the hit television show ‘Glee’ infringed the trade mark of a long-established chain of stand-up comedy clubs.
Comic Enterprises Limited (CEL) registered its UK trade mark, ‘The Glee Club’, in 2001, long before Glee – the enormously popular story of an American high school choir – appeared on screens in the UK. CEL runs four comedy clubs around the country and accused Twentieth Century Fox Film Corporation (Fox) of ‘swamping’ its rights in a way that caused confusion and ‘put off’ potential customers.
The Court found that CEL’s clubs, which have hosted such comedy stars as Jack Dee, Michael McIntyre and Rob Brydon, had established a ‘distinctive’ character and that Fox had shown no ‘objective justification’ for trade mark infringements that were likely to lead to confusion between the venues and the TV show.
The judge ruled, “I have found that there is a likelihood of confusion and that Fox’s use causes dilution and tarnishing. Continued use of the (Glee) sign in such circumstances cannot be in accordance with honest practices in industrial and commercial matters…the damage suffered by CEL is caused by its venues being confused with the TV show and its potential customers being put off.”
CEL did not allege that Fox had ‘taken unfair advantage’ of the trade mark and the Court rejected a passing off claim against the studio. The ruling nevertheless opened the way for CEL to seek injunctive relief as well as damages or an account of profits from Fox. However, argument as to appropriate relief was left over to another day.