Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

For infringement under section 10(2)(b) of the Trade Marks Act 1994, the court must make a global assessment from the perspective of the average consumer. It must compare the defendant’s actual use, in its full context, with notional and fair use of the registered mark for all registered goods or services. Evidence of confusion arising when consumers encounter the defendant’s sign before the claimant’s mark is admissible, but must be evaluated carefully.

For section 10(3), detriment to distinctive character may be proved by evidence of changed economic behaviour, or a serious likelihood of it. Passing off remains distinct: confusion caused when the claimant expands its business does not establish an actionable misrepresentation by a defendant whose original launch did not misrepresent a trade connection.

Comic Enterprises Ltd operated comedy and music venues under a registered device mark containing the words “the glee CLUB”. Twentieth Century Fox Film Corporation launched a musical-comedy television series called glee.

The High Court, in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2014] EWHC 185 (Ch), limited the mark’s specification after partial revocation for non-use. It held that Fox infringed under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994, but dismissed passing off.

Fox appealed the infringement findings. CEL cross-appealed the dismissal of passing off. The central issues were whether the parties’ signs and entertainment services created actionable trade mark confusion or detriment, and whether the evidence established an actionable misrepresentation for passing off.

1. Appeal and cross-appeal dismissed. The court upheld the findings of infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994. It also upheld dismissal of the passing-off claim.

2. The deputy judge had made material errors in his treatment of the evidence of confusion, the similarity of services and the context of Fox’s use. The Court of Appeal therefore conducted its own assessment. The word “glee” was the prominent feature of both signs. The registered mark had reasonable inherent distinctiveness, and the parties’ entertainment services were reasonably similar when assessed by their nature, purpose, use and possible complementarity.

3. The assessment of confusion was finely balanced. Evidence that consumers first familiar with the television series later believed CEL’s venues were connected with it was admissible. It could be probative of the statutory risk, provided that its cause and value were examined carefully. Taken with the similarity of signs and services, the contextual evidence established a likelihood that average consumers would believe the businesses came from the same or economically linked undertakings.

4. For section 10(3), the mark had the required reputation and consumers would make the necessary link. The evidence of altered marketing, corrective promotional material and consumers deterred from attending CEL’s venues supported a finding of actual or seriously likely change in economic behaviour. Fox’s good-faith adoption of a title for a creative work did not amount to due cause when weighed against the continuing likelihood of confusion and substantial detriment to the mark.

5. CEL had goodwill in both the mark and the word “glee” by late 2009. However, confusion was not enough for passing off. Fox’s launch had not caused a sufficient misrepresentation that its television series was connected with CEL’s established Birmingham and Cardiff businesses. The later problems attending CEL’s expansion to Oxford and Nottingham did not retrospectively create actionable misrepresentation by Fox.

• Court of Appeal (Civil Division): Fox’s appeal against the findings of trade mark infringement was dismissed, and CEL’s cross-appeal on passing off was dismissed: [2016] EWCA Civ 41.
• High Court, Chancery Division (Intellectual Property): The mark was partially revoked for non-use and its specification limited. Fox was held to infringe under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994; CEL’s passing-off claim failed: [2014] EWHC 185 (Ch).