IP protection: it’s no laughing matter

In an IP case which gained interest outside of the profession, our client Comic Enterprises Limited, which trades as “The Glee Club”, successfully sued 20th Century Fox on the basis that their TV show “Glee” infringes The Glee Club’s UK trade mark registration.

The Glee Club first opened its doors in Birmingham in 1994 as a live comedy and music venue.  Since then Glee has opened venues in Cardiff, Oxford and Nottingham and has hosted some of the biggest names in comedy, including Michael McIntyre and Lee Evans.

In 2009, 20th Century Fox launched a television show under the name “Glee”, which mainly focused on an American high school singing club. The Glee Club found that members of the UK public were confusing its clubs with Fox’s TV show, with many consumers believing there to be some link or association between the parties.  This was leading to potential customers being discouraged from attending the club. As a result of this confusion, The Glee Club brought legal proceedings against Fox.

The High Court judge ruled that there had been an infringement of trade mark rights, and said: “I believe that evidence taken as a whole shows that there is a likelihood of confusion. 20th Century Fox’s use causes dilution and tarnishing. Continued use in such circumstances cannot be in accordance with honest practices in industrial or commercial matters.” A full legal analysis is provided on our website.

One of the reasons this case has attracted so much attention is because it shows that the legal system is perhaps more accessible to smaller organisations than previously thought.  Despite the apparent odds stacked against The Glee Club, due to the different sizes of the companies involved, correct and due legal recognition was given to the ownership of a registered trade mark.

We are delighted that our client has been able to protect their brand and image successfully.  When companies have built up a reputation over many years and that is based on a name or logo, it is clearly of great commercial value to be able to maintain and defend that brand.  The benefit of protecting your brand using the trade mark system is clear and we would always recommend that companies talk to us at an early stage about the names and logos they plan to use in promoting their goods and services so that we can ensure the appropriate registrations are made at a suitable stage, so as to protect the investment made in growing and developing the business under that brand.

Certainly the use of the trade mark system to protect names and logos should be viewed as an essential part of any business strategy.  Obtaining a trade mark registration does not have to be expensive, and like an insurance policy you will hope you never have to use it, but it gives peace of mind to know you have it there, should actions by others threaten to tarnish or dilute your brand image.