Comic Enterprises Ltd v Twentieth Century Fox Film Corporation

Trade mark confusion is assessed globally, comparing the defendant’s actual use with notional and fair use of the registered mark. Similarity of goods or services is both a threshold requirement and a factor in that assessment. Reverse confusion evidence is admissible, but its cause and probative value require careful examination. Later evidence may illuminate the likelihood of confusion at commencement without allowing reliance on a subsequently enhanced reputation.

Protection of a reputed mark extends to potential customers. Detriment to distinctive character requires evidence of changed economic behaviour or a serious likelihood of change; quantification is unnecessary. Good faith and artistic considerations enter the due cause balance. Passing off requires actionable misrepresentation affecting the goodwill established when the challenged activities began. Confusion arising during later business expansion does not, without more, establish that requirement.

Comic Enterprises Ltd operated comedy and music venues and owned a registered series of two device marks incorporating the words ‘the glee CLUB’. Twentieth Century Fox Film Corporation launched the musical comedy television series glee in late 2009. It subsequently used that name for related concerts, recordings and merchandise. Comic Enterprises alleged registered trade mark infringement and passing off.

In [2014] EWHC 185 (Ch), a deputy High Court judge partially revoked the registration for non-use, upheld its validity for the remaining entertainment services, and found infringement under sections 10(2) and 10(3) of the Trade Mark Act 1994. He dismissed the passing off claim. Fox appealed the infringement findings, and Comic Enterprises cross-appealed on passing off. The parties agreed the issues arising from separate appeals concerning remedies.

The principal questions concerned service similarity, the context of the accused use, the relevance of reverse confusion, detriment and due cause. Fox also contingently sought to challenge the compatibility of series-mark registration with EU law. Resolution of that issue was reserved pending further directions if necessary.

1. The infringement appeal was dismissed, subject to the outstanding series-mark validity issue. The passing off cross-appeal was dismissed. Kitchin LJ delivered the judgment, with which Lloyd Jones LJ and Arden LJ agreed.

2. Under section 10(2)(b) of the Trade Mark Act 1994, similarity of services was a threshold requirement and also informed the global assessment of confusion. The defendant’s sign had to be considered in its actual context against notional and fair use of the registered mark throughout its specification. The deputy judge had inadequately analysed the causes of the witnesses’ confusion, service similarity and context. Those errors required the court to undertake its own assessment.

3. Applying the guidance in Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc and Specsavers International Healthcare Ltd v Asda Stores Ltd, the mark had reasonable inherent distinctiveness, the signs were reasonably similar, and the relevant services were reasonably similar. The differences between television programming and venue entertainment did not eliminate their similarities or potential complementarity. Context did not exclude an apparent commercial connection. The assessment was finely balanced, but the probative evidence of actual confusion established a likelihood that consumers would believe the businesses were connected.

4. Reverse confusion evidence was admissible. The sequence in which consumers encountered the sign and mark did not determine its legal relevance. Courts nevertheless had to examine whether witnesses were genuinely confused, represented the average consumer and were confused because of the relevant similarities. Evidence arising after launch could inform the prospective assessment, although a claimant could not bolster an otherwise unsuccessful claim through a subsequently growing reputation.

5. For section 10(3), the mark possessed the necessary reputation, and the required link existed. Applying Intel Corp Inc v CPM United Kingdom Ltd, likelihood of confusion necessarily established a link; the evidence also supported a link independently. Protection extended beyond existing customers. The defendant’s extensive use impaired the mark’s identifying and attracting functions. Evidence of discouraged potential customers and altered marketing established changed economic behaviour or a serious likelihood of change. Quantified turnover loss was unnecessary.

6. Due cause required a balance of the competing interests. Good faith favoured Fox, while the creative character of the series carried modest weight because the complaint concerned its title and a satisfactory alternative could have been chosen. Those considerations did not outweigh the service similarity, likelihood of confusion and significant detriment. Fox had not established due cause.

7. Passing off required goodwill, misrepresentation and consequential damage, assessed when the challenged activities began. Comic Enterprises then possessed goodwill under both its mark and ‘glee’, associated with its Birmingham and Cardiff businesses. The evidence did not establish a misrepresentation affecting a significant number of consumers in relation to that goodwill. Greater confusion following expansion into Oxford and Nottingham did not establish actionable misrepresentation by Fox. The different scope of registered trade mark protection explained the different outcomes. Compatibility of series-mark registration under section 41 with EU law remained unresolved.

• Court of Appeal (Civil Division): [2016] EWCA Civ 41 . The infringement appeal was dismissed subject to the outstanding challenge concerning series-mark registration. The passing off cross-appeal was dismissed. The parties had agreed the issues arising from the separate remedies appeal and cross-appeal.
• High Court, Chancery Division: [2014] EWHC 185 (Ch) . Mr Roger Wyand QC, sitting as a deputy High Court judge, partially revoked the registration for non-use, upheld it for the remaining services, found infringement under sections 10(2) and 10(3) of the Trade Mark Act 1994, and dismissed passing off. Further orders addressed injunctive and financial relief.