Comic Enterprises Ltd v Twentieth Century Fox Film Corp

A colour claim is not a limitation of a trade mark unless the registration expressly restricts the rights conferred. A monochrome device mark may encompass use in different colours, and a colour version may form a valid series with it where colour does not substantially affect identity.

Genuine use must be assessed against the actual goods or services provided. The court must frame a fair specification reflecting coherent categories of use. For trade mark confusion, the assessment is global and may be established by evidence of consumers wrongly associating the earlier business with the later sign. Infringement under section 10(3) requires objective evidence of actual or likely change in consumer economic behaviour. Such change need not be quantified. That evidence did not, however, establish the misrepresentation required for passing off.

Comic Enterprises Limited operated comedy and music venues under a registered series mark incorporating “The Glee Club”. Twentieth Century Fox Film Corporation used “glee” for a successful television series, associated live shows, recordings and merchandise.

The claimant alleged trade mark infringement and passing off. Fox counterclaimed for partial revocation for non-use and partial invalidity on descriptiveness grounds. The court considered the scope and validity of the registration, the appropriate specification, infringement under sections 10(2)(b) and 10(3), the section 11(2)(b) defence, and whether the evidence established passing off.

1. Registration and series. The register’s reference to a colour claim did not impose a limitation under section 13 of the Trade Marks Act 1994. The mark was properly registered as a series under section 41(2). The coloured and monochrome versions provided, in substance, a single point of comparison because the colour combination was not part of the mark’s distinctive character ([58]–[73]).
2. Non-use and specification. The claimant’s limited sales of promotional T-shirts were not genuine use directed at creating or maintaining an outlet for clothing. The Class 25 specification was therefore revoked. Use in Class 41 justified a narrower specification comprising live comedy services, nightclub and cabaret entertainment, music hall services, live and recorded music, dancing, facilities for comedy and music entertainment, and production or presentation of live shows, displays and sound recordings. The court applied the fair-specification approach, balancing the interests of the proprietor, other traders and the public ([74]–[94]).
3. Invalidity. The words “glee club” were descriptive to a small specialist group, but the evidence did not show that they had a relevant meaning to a significant portion of the public. The device was not devoid of distinctive character. The registration remained valid for the limited Class 41 specification, and acquired distinctiveness also supported validity ([95]–[104]).
4. Section 10(2)(b). The sign and mark had visual, aural and conceptual similarities, although they were not highly similar. The relevant average consumer was reasonably well informed, observant and circumspect. Evidence of “wrong way round” confusion materially supported a likelihood of confusion. It was unnecessary to prove actual or “right way round” confusion. The mark was infringed under section 10(2)(b) ([105]–[127]).
5. Section 10(3). The mark had a reputation. The sign called it to mind and its use caused detriment to distinctive character and repute. Objective evidence that potential customers were discouraged from attending the claimant’s venues established a change in economic behaviour. Quantification was unnecessary. The descriptive-use defence under section 11(2)(b) failed because the use was not in accordance with honest practices in circumstances involving confusion and dilution. Section 10(3) infringement was established ([128]–[146]).
6. Passing off. The claimant proved damage caused by potential customers confusing its venues with the television programme, but that was not the necessary misrepresentation that the defendant’s business was associated with the claimant. The passing-off claim failed ([147]–[148]).