Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP

Global entertainment giant Twentieth Century Fox Film Corporation recently lost its case against Comic Enterprises Limited, a UK company that runs several live entertainment venues in the UK, in what has been billed as a modern day David vs. Goliath. The subject of the dispute: Glee.

Comic Enterprises owns the UK registered figurative trade mark for “the glee club” covering various entertainment services. Fox is responsible for the television series “glee” based in a US high school about a singing club. The UK trade mark was registered in 2001 probably before the idea for “glee” was even pitched to Fox. However, since its launch in 2009 the star of glee the TV show has risen quickly, spawning DVDs, concert tours and other merchandise.

Comic Enterprises claimed that Fox’s use of glee, infringed its UK trade mark as consumers would be confused and/or Fox’s use would lead to the distinctive character of its mark being damaged.

Fox defended its action denying infringement and counter claiming for partial revocation of Comic Enterprises trade mark on the grounds of non-use and invalidity on the basis that the words “glee club” are descriptive. The Court was prepared to agree with Fox that the trade mark specification should be limited; not unusual where broad categories have been claimed. However, this was the first and last piece of good news for Fox.

In a case about a singing club, this case was very much about hitting the right note and as lawyers know in cases about confusion, nothing strikes the right tone like persuasive evidence direct from the public. Comic Enterprises was able to provide evidence that numerous members of the public had seen the registered trade mark and thought that the mark had something to do with the TV show.

In contrast, Fox was unable to persuade the Court that the term Glee was descriptive. In this respect its reliance upon evidence from choral societies at exclusive UK private schools, such as Harrow and Winchester College did not strike a chord, particularly when compared to the numerous statements from members of the public, who linked the term to the TV show.

On this basis, even with a much reduced specification, Fox’s use infringed the trade mark.

Where does this leave Fox and what is the score for glee the TV show in the UK?

Fox will certainly be banging its drum towards the Court of Appeal. If the decision stands then to retain the name glee in the UK a deal may need to be struck with Comic Enterprises and that deal is likely to have lots of zeros.

However, overturning the Judgment is likely to be difficult. UK appeal courts are very reluctant to overturn first instance findings that relate to evidence. It is generally assumed that the first instance Judge who sees and hears the evidence is in the best position to assess it and give it weight.

The strongest note for Fox may be that the Judge’s finding was strongly based on wrong way confusion, with consumers being aware of the show first and then when they saw the trade mark believing it was linked to the show. This is relatively unusual. But the Judge noted that what is required is the likelihood of confusion; not a specific kind of confusion.

As a matter of public policy, it seems unlikely that the Court will find that a subsequent user can unseat the rights of a registered trade mark proprietor, even if its reputation quickly overtakes that of the registered mark.