Glee as IP Court Rules in Favour of Club Owner

Large international corporations are well known for flexing their financial muscles and attempting to browbeat smaller companies into submission when they are in dispute.

Such seemed to be the case when a comedy club owner took on 20th Century Fox over the right to use the trade name 'Glee'. The Glee comedy clubs have been a fixture of the stand-up comedy scene in several UK cities for some years.

The club owner argued that Fox's use of the name 'Glee' in its hit TV series meant that users of the comedy clubs could think that they had some connection with the series, which started some years after the clubs were launched.

Fox argued that there was insufficient evidence that the typical consumer would be confused between the two trade marks and that the law did not admit of 'wrong way round confusion' – where the people would believe that an original trade mark was somehow connected with a later one. The normal case is that a new trade mark 'trades off the goodwill' of an established one.

The Court of Appeal threw out both of Fox's arguments, concluding that it was not necessary for consumers to be confused between the two trade marks – merely that they might think the two marks were connected, and that there was no inherent flaw in wrong way round confusion creating an actionable breach of trade mark rights.

The Court concluded that Fox had infringed the trade mark of the club owner. Fox has announced its intention to appeal.